LIBRARY 

OF  THE 

UNIVERSITY  OF  CALIFORNIA. 

Class 


WORKS  MANAGEMENT  LIBRARY 


PATENTS  AS  A  FACTOR 

IN 

MANUFACTURING 


BY 

EDWIN  J.  PRINDLE 

.1 

OP  THE   NEW  YORK   BAR 


NEW  YORK 

THE  ENGINEERING  MAGAZINE. 
1908 


Of  THE 

(  UNIVERSITY 

Of 


Copyright,  1908 
By  JOHN  R.  DUNLAP 


WAVERLY  PRESS 
BALTIMORE 


PREFACE. 

The  purpose  of  this  volume,  as  indicated  by  the 
author  at  the  outset,  and  emphasized  again  in  the 
conclusion,  is  not  in  any  sense  to  make  the  inventor 
or  the  manufacturer  his  own  patent  lawyer.  It  is 
rather  to  convey  an  idea  of  the  nature  of  a  patent, 
the  protection  it  may  afford,  the  advantages  it 
may  possess  for  meeting  certain  commercial  con- 
ditions, the  safety  which  may  be  secured  in  rela- 
tions between  employers  and  employees,  and  the 
general  rules  by  which  the  courts  will  proceed  in 
upholding  the  patent  and  in  thwarting  attempted 
infringements;  to  show  the  manufacturer,  in  a  gen- 
eral way,  what  may  be  accomplished  by  patents, 
but  not  to  lead  him  to  attempt  such  accomplish- 
ment without  legal  advice. 

The  design  is  especially  to  lay  down  the  funda- 
mental principles  so  that  they  may  be  grasped 
clearly  and  fully  enough  to  direct  rightly  the  course 
of  the  inventor,  patentee,  or  manufacturer  in  the 
early  steps  which  are  usually  taken  before  the 
advice  of  counsel  is  secured.  With  these  points 
clearly  in  mind,  the  procedure  may  be  carried  for- 
ward so  as  to  avoid  the  most  common  pitfalls,  and 


205609 


8  PREFACE 

the  reader  may  be  clearly  warned  when  and  where 
it  is  necessary  to  call  in  expert  advice. 

In  the  preparation  of  the  work  the  author  has 
been  guided  by  the  results  of  wide  practice,  both  in 
mechanical  engineering  and  in  patent  law.  The 
subject  matter  has  been  carefully  prepared  in  view 
of  his  experience  in  patenting,  litigating,  and 
establishing  many  well-known  inventions,  and 
covers  the  points  which  leading  cases  have  shown  to 
be  important  and  which  conferences  with  clients 
have  shown  to  be  most  necessary  to  establish  in  the 
lay  mind.  To  the  inventor  and  the  patentee  the 
most  significant  portion  will  be  the  clear  outline 
of  the  precautions  which  should  be  taken  in  the 
preliminary  steps,  the  rules  and  principles  by  which 
safe  advance  may  be  made  up  to  a  certain  point, 
and  the  demonstration  of  the  great  advantage  as 
well  as  the  necessity  of  securing  competent  legal 
assistance  in  carrying  the  matter  through  -the 
Patent  Office.  To  the  manufacturer,  equal  or 
greater  significance  will  appear  in  the  demonstra- 
tion of  the  great  commercial  advantages  which 
may  be  secured  by  proper  use  of  patents  in  the 
shop,  in  dealing  with  employees,  in  the  sales  office, 
and  indeed  in  the  creation  and  pre-emption  of 
valuable  markets. 

THE  EDITOR* 


CONTENTS. 

CHAPTER  I.    INFLUENCE  OF  PATENTS  IN  CONTROLLING 
A  MARKET 

How  Patents  Have  Controlled  Competition  in 
American  Industries — Their  Importance  Recognized 
by  Framers  of  the  Constitution — Examples  of  Great 
Business  Successes  founded  on  Patents — Patents 
the  Only  Legal  Monopolies — Their  Range  as  De- 
fined in  Leading  Decisions — How  They  May  be  Ef- 
fectively Employed — Importance  of  Having  Knowl- 
edge of  the  General  Principles — The  Scope  of  the 
Present  Book  Outlined 13 

CHAPTER  II.    SUBJECT,  NATURE,  AND  CLAIM  OF  A  PATENT 

The  Four  Classes  of  Inventions  for  Which  Patents 
Are  Granted — Definitions  and  Examples  of  Each 
Class — Illustrations  from  Leading  Cases — When 
New  Elements  or  New  Combinations  Are  Patentable 
— The  Nature  of  a  Patent — What  is  Required  of 
the  Inventor — Prior  Use  Explained — Legal  Effect 
of  Grant  of  a  Patent — The  Claims  of  a  Patent — 
What  They  Are  Required  to  State — Common  Mis- 
conceptions— How  to  Make  Claims  Comprehensive 
— Examples  of  Good  and  Bad  Forms — Essential 
Elements  of  the  Best  Form  for  a  Claim — What  the 
Courts  Have  Held — Essential  Importance  of  Skill 
and  Foresight  in  Drawing  a  Patent — Proceedings 
in  the  Patent  Office. . .  .....  20 


10  CONTENTS 

CHAPTER  III.  WHAT  PROTECTION  A  PATENT  AFFORDS 
The  Terms  of  the  Grant  of  a  Patent — Extensions 
Possible  only  by  Special  Act  of  Congress — Why  Al- 
most Never  Granted — How  the  Grant  Is  Legally 
Construed — Separate  Monopolies  Obtainable  for 
Making,  Using  and  Selling  a  Patented  Article — Ex- 
amples from  Actual  Cases — How  Rights  May  Be 
Restricted  as  to  Territory  or  Time — Separate  Rights 
to  Same  Invention  May  Be  Sold  in  Different  Indus- 
tries— Patent  Licenses  May  Be  Restricted  as  to 
Price,  Uses,  Resale,  etc. — Examples  from  Commer- 
cial Cases  that  Have  Been  Litigated — Far-Reaching 
Use  of  Patent  Rights  to  Secure  Monopoly  by  Li- 
censes— Trade  Combinations  under  Patents  Are  Legal 
— Striking  Examples  from  Actual  Practice 38 

CHAPTER  IV.     OF  INFRINGEMENTS 

When  a  Patent  Is  Infringed — Presumption  in 
Favor  of  Validity  and  Against  Prior  Use — Defenses 
Open  to  an  Alleged  Infringer — Defenses  Which  the 
Court  Will  or  Will  not  Hear — Examples  from  Lead- 
ing Cases — Interpretation  of  the  Claim  of  a  Patent — 
How  the  Courts  Will  Construe  Favorably  to  the 
Patentee — Instances  of  Valid  and  Invalid  Claims — 
Infringement  by  a  Structure  Equivalent  to  the  Pat- 
ented Structure  but  Avoiding  the  Terms  of  the 
Claim  —  Examples  —  Principles  Adopted  by  the 
Courts  in  Such  Cases — Avoiding  Infringement  by 
Limiting  the  Claim  by  the  Former  Art — Ruling 
of  the  Courts — Infringement  by  Improvements — 
Avoiding  Infringement  by  Omitting  an  Element  of 
the  Claim — The  Courts  will  Read  an  Element  into, 
but  Usually  not  out  of,  a  Claim — What  Range  of 
Equivalents  the  Court'  will  Grant  to  a  Patentee — 
Process  Claim  May  Be  Infringed  even  when  Differ- 
ent Apparatus  Is  Used — Repair  and  Reconstruction 


CONTENTS  1 1 

of  Patented  Devices — How  Restricted — Contribu- 
tory Infringements — How  Enjoined — Patentee  Pro- 
tected Against  Unlicensed  Home  Manufacture  of  his 
Invention  for  Sale  Abroad — Against  Unlicensed 
Foreign  Manufacture  for  Import — Injunctions  and 
Damages — Marking  of  Patented  Articles — Design 
Patents 50 

CHAPTER  V.     PATENTING  A  NEW  PRODUCT 

What  Protection  Is  Possible  for  Monopoly  of  a 
New  Product— The  Three  Direct  Forms  and  Two 
Indirect — Examples — Patents  on  the  Product — 
Patents  on  the  Process — Patents  on  the  Machine 
Which  Makes  the  Product — Patents  on  the  Blank 
from  Which  the  Product  is  Made — Protection  by 
Tying  the  Product  up  with  Another  Patent — Effects 
and  Desirability  of  Each  Mode — Precautions  to  Be 
Observed — Investigations  Necessary — Rights  of 
Part  Owners  of  a  Patent — Avoidance  of  Claims  of 
Older  Products  or  Processes — Time  Allowed  before 
Patents  Must  Issue — Summary 69 

CHAPTER  VI.     PATENT  RELATIONS  OP  EMPLOYER  AND 
EMPLOYEE 

The  Three  Principal  Points  in  These  Relations- 
Employees'  Inventions;  the  General  Rulings  of  the 
Court  in  Leading  Cases — When  the  Employer  Will 
Be  Held  to  Be  the  Inventor — In  Whose  Names  Pat- 
ents Must  Be  Taken — The  Law  of  Inventions  Made 
by  an  Employee — Examples  of  Valid  and  Invalid 
Contracts — Important  Decisions  Illustrating  the  Ac- 
cepted Points — Contracts  the  Employer  Should 
Make  with  Employees  Covering  Inventions — Em- 
ployer's and  Employee's  Liability  as  to  Infringe- 
ments— Employees,  if  Vested  with  Discretion,  May 
Be  Enjoined — Liability  of  Foremen  and  Mechanics, 


12  CONTENTS 

How  Limited — Summary  of  the  Points  upon  Which 
a  Manufacturer  Should  Be  Well  advised  as  to  the 
Law  of  Patents 84 

CHAPTER  VII.     CONTESTS  BETWEEN  RIVAL  CLAIMANTS 
TO  AN  INVENTION 

Patent  Office  Contests  Usually  Decided  by  Early 
History  of  the  Invention  Before  it  Reaches  the  Patent 
Office — Inventor  Should  Understand  General  Prin- 
ciples and  Direct  His  Procedure  Accordingly  from 
the  Outset — The  Elements  of  the  Inventive  Act — 
Mental  Conception  and  Reduction  to  Practice — Illus- 
trations from  Well-Known  Inventions — Diligence 
Necessary  in  Reducing  an  Invention  to  Practice — 
The  Nature  of  the  Conception  of  an  Invention — Illus- 
trations from  Leading  Cases — How  the  Date  of  Con- 
ception May  Be  Proved — Special  Instructions  for 
Inventors — Caveats;  Their  Use  and  Their  Disad- 
vantages— The  Reduction  of  an  Invention  to  Prac- 
tice— How  Made  Safest  and  Most  Complete — Danger 
of  Discrediting  a  Reduction  to  Practice  by  the  Inven- 
tor's After-Conduct — A  Successful  Working  Model 
May  Constitute  Reduction  to  Practice — Physical 
Reduction  to  Practice  not  Always  Essential — Illus- 
trative Cases — Diligence;  How  Construed  in  Patent 
Clases — Interferences  and  Contests  Between  Rival 
Claimants — Guiding  Principles  Followed  by  the 
Patent  Office— Preliminary  Statements;  What  They 
Must  Contain — Typical  Cases  Illustrated  by  Dia- 
grams   103 

INDEX..  .   131 


PATENTS  AS  A  FACTOR   IN  MANU- 
FACTURING. 

CHAPTER  I. 

INTRODUCTORY;  INFLUENCE  OF  PATENTS 
IN  CONTROLLING  A  MARKET. 

PATENTS  have  been  one  of  the  most  important 
factors  in  the  growth  of  the  United  States 
from  a  group  of  poverty-stricken,  non-manufac- 
turing dependencies  to  the  greatest  manufacturing 
country  in  the  world.  In  fact  the  late  Senator  0. 
H.  Platt  of  Connecticut,  one  of  the  profoundest 
minds  in  the  United  States  Senate  for  the  past 
thirty  years,  maintained  that  the  American  patent 
system  has  been  the  greatest  factor  in  the  material 
development  of  the  nation. 

The  framers  of  the  Constitution  of  the  United 
States  thought  the  encouragement  of  inventing  of 
sufficient  importance  to  provide  in  the  Constitu- 
tion for  the  granting  of  patents.  George  Washing- 
ton gave  his  personal  attention  to  the  granting  of 
at  least  one  patent,  and  one  is  still  in  existence 
which  bears  his  signature.  Originally  the  President, 

13 


14  PATENTS   IN    MANUFACTURING 

the  Secretary  of  State  and  the  Attorney  General,  as 
a  board,  granted  all  patents,  until  patents  became 
sufficiently  numerous  to  require  more  attention 
than  they  could  give  to  the  matter.  Patents  are 
the  subjects  of  important  and  exhaustively  con- 
sidered treaties  between  the  principal  countries. 
Almost  all  civilized  countries  have  patent  systems, 
even  including  Japan. 

Patents  are  the  best  and  most  effective  means  of 
controlling  competition.  They  occasionally  give 
absolute  command  of  the  market,  enabling  their 
owner  to  name  the  price  without  regard  to  cost  of 
production,  as  for  example  where  they  cover  all 
known  forms  of  devices  for  accomplishing  a  given 
purpose.  There  are  a  number  of  great  companies 
whose  position  commercially  is,  or  has  been,  due 
almost  wholly  to  the  possession  of  controlling 
patents. 

Among  such  corporations  are  the  Bell  Telephone 
Company,  which,  while  it  does  not  now  depend 
largely  upon  its  patents,  was  able  to  control  the 
situation  absolutely  for  many  years,  and  to  get 
itself  so  well  located  that  it  now  has  a  practical 
monopoly  in  many  cities,  because  of  its  being  the 
first  to  occupy  the  field.  The  United  Shoe  Machin- 
ery Company  is  today  in  control  of  the  manufacture 
and  sale,  or  licensing,  of  the  bulk  of  shoe-making 
machines,  because  of  its  patents;  and  this  control, 


CONTROLLING   THE   MARKET  15 

although  several  serious  attempts  to  break  it  have 
been  made  by  concerns  heavily  backed  with  money, 
the  owners  of  the  patents  have  been  able  to  main- 
tain. Ninety  per  cent  of  the  welt  shoes  made  in 
the  United  States  are  sewed  upon  machines  which 
the  United  Shoe  Machinery  Company  has  been  able 
to  protect  by  means  of  its  patents.  The  Westing- 
house  Air  Brake  Company  built  itself  up  on  patents. 
Patents  have  played  an  important  part  in  the  devel- 
opment of  the  Westinghouse  Electric  and  Manufac- 
turing Company  and  the  General  Electric  Com- 
pany. They  have  indeed  become  so  well  recognized 
a  factor  in  commerce  that  these  concerns,  and  many 
others,  keep  a  large  corps  of  inventors  at  work 
with  a  view  constantly  to  improve  their  product 
so  that  they  will  be  able  to  offer  a  product  that  is  at 
least  slightly  better  than  that  of  their  competitors, 
and  which  is  so  protected  by  patents  that  they  do 
not  have  to  compete  with  an  article  of  equal  merit. 
The  time  when  the  patents  on  their  present  pro- 
ducts will  expire  is  constantly  kept  in  view,  and 
they  endeavor  to  have  new  ideas,  similarly  protected 
and  ready  to  put  on  the  market  when  the  patents 
under  which  they  are  at  present  working  shall  have 
expired. 

The  reader  will  be  able  to  recall  many  devices 
and  processes  which  are  now,  or  until  recently  have 
been,  entirely  within  the  control  of  a  single  con- 


16  PATENTS   IN   MANUFACTURING 

cern.  Take,  for  instance,  the  most  successful 
forms  of  any  of  the  following  devices :  the  air  brake, 
the  cash  register,  the  steel  car,  the  most  popular 
stopper  for  beer  bottles,  the  form  of  shoe-lasting 
machine  most  in  use,  the  process  of  making  the 
best  armor  plate,  the  commercial  process  of  making 
calcium  carbide,  from  which  acetylene  gas  is  gener- 
ated, as  well  as  the  commercial  form  of  the  carbide 
itself;  the  incandescent  gas-lamp,  the  phonograph 
and  the  graphophone.  Even  if  a  patent  covers 
only  the  single  feature  of  a  device  which  makes  it 
commercially  the  most  desirable  of  its  kind,  still 
such  a  patent,  so  far  as  holding  the  market  at  the 
old  price  is  concerned,  often  gives  a  complete 
monopoly.  A  patent  covering  a  process  or  a 
machine  for  making  a  staple  article,  which  process 
or  machine  effects  such  a  saving  in  the  cost  of 
production  as  to  enable  its  owner  to  undersell  all 
others  at  a  fair  profit  to  himself,  is  as  valuable, 
while  that  condition  lasts,  as  a  patent  on  the  article 
itself,  for  the  effect  is  to  give  him  control  of  the 
market. 

Patents  are  the  only  legal  form  of  absolute  mo- 
nopoly. And  they  are  absolute  so  far  as  they  go. 
In  a  recent  decision  the  court  said: 

Within  his  domain,  the  patentee  is  czar.  The 
people  must  take  the  invention  on  the  terms  he 
dictates  or  let  it  alone  for  seventeen  years.  This 


CONTROLLING   THE    MARKET  17 

is  a  necessity  from  the  nature  of  the  grant.  Cries 
of  restraint  of  trade  and  impairment  of  the  freedom 
of  sales  are  unavailing,  because  for  the  promotion  of 
the  useful  arts  the  constitution  and  statutes  author- 
ize this  very  monopoly. 

The  possession  of  suitable  patents  is,  therefore, 
of  great  importance  to  the  manufacturer.  On 
the  other  hand,  it  is  equally  important  to  the  manu- 
facturer whose  competitor  has  patents,  to  under- 
stand what  limitations,  if  any,  there  are  to  his 
competitor's  advantage,  and  how,  if  at  all,  a  coun- 
ter-advantage may  be  gained. 

If  a  manufacturer  develops  an  invention  of 
value,  he  should  patent  it,  even  though  he  might 
not  care  to  be  able  to  prevent  his  competitors  from 
using  it ;  because,  if  he  does  not  patent  it,  someone 
else  may  patent  it  and  may  then  sue  for  an  injunc- 
tion to  prevent  his  use  of  the  invention,  and  it  is 
much  cheaper  to  patent  an  invention  than  to  defend 
a  suit  for  infringement  of  someone's  else  patent. 
This  is  not  at  all  an  impossible  occurrence,  but  has 
actually  happened. 

Having  shown  from  this  brief  sketch  the  import- 
ance of  the  subject,  the  purpose  and  scope  of  this 
book  may  thus  be  stated : 

I  have  found,  in  my  practice  of  the  law,  that 
many — in  fact  most — owners  of  patents  and  of 
patentable- inventions  do  not  fully  understand  what 


18  PATENTS   IN   MANUFACTURING 

their  rights  are  under  their  patents ;  what,  for  in- 
stance, can  be  accomplished  by  means  of  them; 
how  they  can  be  bought  and  sold;  how,  while 
getting  all  the  benefit  possible  in  their  own  arts, 
those  who  own  patents  can  sometimes  make  money 
out  of  their  patents  by  permitting  others  to  use  the 
invention  in  other  and  non-competing  arts;  to 
whom  an  invention  belongs  that  is  worked  out  by 
an  employee;  how  to  protect  oneself  from  being 
supplanted  by  improvements  made  by  one's  own 
employees ;  how  to  prevent  a  manufacturer's  pro- 
duct from  being  used  in  a  way  not  intended,  or  sold 
at  a  price  below  that  desired  by  the  patent  owner. 

As  the  rights  to  a  contested  patent — that  is,  a 
patent  which  is  being  contested  for  by  two  or 
more  inventors — depend  upon  acts  which  took 
place  before  the  inventor  came  into  the  patent 
office  by  his  application  for  patent,  it  is  highly 
important  that  he  should  know  how  to  manage 
these  previous  acts  so  as  to  put  himself  in  the  best 
position  to  win  the  contest.  It  is,  therefore, 
important  that  those  interested  in  patents  should 
know  the  principles  upon  which  these  contests  are 
decided. 

While  I  do  not  aim  to  make  the  manufacturer 
his  own  lawyer,  I  do  wish  to  open  his  eyes  to  what 
it  is  possible  to  do  in  connection  with  patents,  not 
for  the  purpose  of  his  doing  it  unguided  by  legal 


CONTROLLING   THE   MARKET  19 

advice,  but  of  suggesting  to  him  to  what  ends  to 
ask  such  advice.  There  are  many  manufacturers 
who  could  and  would  strengthen  their  position 
commercially  through  patents,  if  they  but  saw  the 
neglected  material  at  hand,  or  understood  the  fuller 
possibilities  of  material,  of  the  availability  of  which 
they  are  already  partially  aware.  With  this  intro- 
ductory definition  and  limitation  of  purpose,  there- 
fore, I  shall  outline  briefly  and  generally  the  nature 
and  scope  of  a  patent,  the  protection  it  affords, 
infringements  and  their  remedies,  the  patenting 
of  a  new  product,  the  patent  relations  between 
employer  and  employee,  and  contests ,_hftt.wppn 
rival  claimants  to  an  invention,  with  the  principles 
settled  in  each  case  by  rulings  of  the  United  States 
courts. 


CHAPTER  II. 

THE  SUBJECT,  NATURE,  AND  CLAIM  OF  A 
PATENT. 

FIRST  we  must  fix  in  our  minds  what  things 
may  be  the  subjects  of  patents.  There  are 
four  classes  of  inventions  for  which  patents  are 
granted,  viz,  arts,  machines,  manufactures  and 
compositions  of  matter.  It  is  not  intended  to  give 
exact  definitions  of  these  classes  of  inventions,  but 
merely  to  illustrate  their  scope,  so  that  a  manufac- 
turer may  be  led  to  inquire  whether  or  not  an  inven- 
tion that  falls  under  his  control  is  patentable.  My 
observation  has  been  that  the  mistake  is  often 
made  of  failing  to  patent  inventions  which  might 
have  been  patented,  but  which  the  layman  decided 
for  himself  were  not  patentable. 

With  this  explanation,  I  may  say  that  an  art 
may  be  any  process,  or  series  of  steps  or  operations, 
for  accomplishing  a  physical  or  chemical  result. 
As  examples  may  be  mentioned :  the  art  of  telephon- 
ing by  causing  undulations  of  the  electric  current 
corresponding  to  the  sound  waves  of  the  spoken 
voice;  or  of  casting  car  wheels,  which  consists  in 
causing  a  jet  of  molten  metal  to  enter  the  mold  in  a 


SUBJECT,    NATURE   AND   CLAIM  21 

tangential  direction  to  give  the  metal  a  whirling 
motion,  so  that  the  heavy  sound  metal  will  flow 
to  the  rim  of  the  wheel  and  the  cinders  and  bubbles 
will  thus  not  occur  on  the  rim.  J  The  patentability 
of  a  process  does  not  depend  on  the  apparatus  with 
which  it  is  carried  out.  The  apparatus  may  be 
old,  and  the  process  may  consist  in  a  new  way 
of  using  old  apparatus.  The  fact  that  no  new 
mechanism  may  be  required  in  practicing  the  pro- 
cess is  apt  to  mislead  the  manufacturer  into  think- 
ing there  is  no  patentable  invention  present.  In 
the  case  of  the  process  of  casting  car  wheels,  the 
same  old  mold  and  ladle  could  be  used,  and  the 
invention  consisted  in  holding  the  ladle  so  that  the 
metal  would  strike  the  mold  tangentially  and  thus 
get  whirling  motion  in  the  mold,  instead  of  simply 
pouring  the  metal  straight  in,  which  would  mix  the 
cinders,  bubbles,  and  sound  metal  together. 

A  manufacture  is  anything  made  by  the  hand  of 
man  that  is  not  an  art,  machine,  or  composition  of 
matter.  A  safety  pin,  a  tooth  brush,  and  a  whistle 
are  all  articles  of  manufacture. 

A  machine  is  any  assemblage  of  mechanical 
elements  having  a  law  of  action  of  its  own.  A 
steam  engine  and  a  jack  knife  are  both  machines. 
The  distinction  between  an  article  of  manufacture 
and  a  machine  is  not  important. 

A  composition  of  matter  is  any  mixture  or  com- 


22  PATENTS   IN   MANUFACTURING 

bination  of  chemical  elements,  whether  solid,  liquid, 
or  gaseous;  such  as  calcium  carbide,  from  which 
acetylene  is  made,  acetylene  itself,  a  soap,  or  a 
tool  steel. 

A  new  combination  of  old  elements  may  be 
patentable,  if  it  produces  a  new  or  improved  result, 
or  an  old  result  in  a  new  way.  For  instance,  a 
lamp  making  an  annular  flame  with  a  central  draft 
was  old.  Lamps  with  a  solid  flame  using  a  chimney 
were  old.  The  chimney  on  the  lamp  with  the  annu- 
lar flame  produced  a  highly  beneficial  result,  and 
this  new  combination  of  old  elements  was  patent- 
able. 

A  combination  of  elements  may  be  patentable 
as  a  whole,  and  some  of  its  sub-combinations  may 
be  patentable.  For  instance,  if  a  machine  formed 
staples  out  of  wire  and  inserted  the  staples  through 
the  eye  of  a  shoe  button  and  fastened  the  button  on 
a  shoe,  the  machine  as  a  whole  might  be  patentable, 
and  the  sub-combination  of  elements  which  formed 
the  staple  might  also  be  patentable  by  themselves, 
so  that  if  anyone  used  this  sub-combination  to 
make  staples  for  use  in  fastening  carpets  to  the 
floor,  the  sub-combination  would  be  infringed. 

A  new  form  of  an  element  of  a  combination  that 
is  old  as  a  whole  may  be  patentable.  Improve- 
ments and  attachments  on  old  machines  may 
be  patentable.  Edison,  Blake,  and  Berliner  all 


SUBJECT,    NATURE    AND    CLAIM  23 

improved  the  Bell  telephone  and  all  received 
patents  for  their  improvements.  As  later  pointed 
out,  however,  merely  improving  the  invention  of  a 
prior  patentee  does  not  give  the  improver  a  right 
to  use  the  principle  of  the  earlier  invention  without 
permission  from  the  patentee. 

A  new  use  of  an  old  device  or  machine  or  process 
may  be  patentable,  if  the  new  use  is  so  different 
from  the  old  use  as  not  to  be  obvious  to  an  ordinary 
skilled  workman  in  the  art.  There  was  no  success- 
ful machine  for  attaching  stays  to  the  corners  of 
paper  boxes.  Such  a  machine  was  invented  and 
patented  and  suit  for  infringement  brought;  the 
defense  was  that  the  machine  was  almost  identical 
with  a  machine  for  addressing  newspapers,  and  that 
it  did  not  require  the  genius  of  an  inventor  to  make 
the  changes  necessary  to  adapt  it  to  attach  box 
stays  instead  of  strips  having  addresses  on  them  to 
newspaper  wrappers.  It  was  shown  that  several 
of  the  addressing  machines  had  been  on  the  market 
for  many  years.  The  Supreme  Court  said,  notwith- 
standing this  fact : 

It  never  seems  to  have  occurred  to  anyone  engaged 
in  the  manufacture  of  paper  boxes  that  they  could  be 
made  available  for  the  purpose  of  attaching  strips 
to  the  corners  of  such  boxes.  This  very  fact  is 
evidence  that  the  man  who  discovered  the  possibility 
of  their  adaptation  to  their  new  use  was  gifted  with 
the  prescience  of  an  inventor.  While  none  of  the 


24  PATENTS    IN    MANUFACTURING 

elements  of  the  new  machine  taken  separately  or 
perhaps  in  a  somewhat  similar  combination  was  new, 
their  adaptation  to  this  new  use  and  the  minor 
changes  required  for  that  purpose  resulted  in  the 
establishment  of  practically  a  new  industry  and  was 
a  decided  step  in  advance  of  any  that  had  heretofore 
been  made. 

*****  with  all  the  anticipating  devices 
before  us,  it  is  apparent  that  the  mere  change  in  the 
shape  of  the  die  was  a  minor  part  of  the  work  involved 
in  so  changing  the  addressing  machine  as  to  make 
it  perform  a  wholly  different  function,  the  invention 
consisting  rather  in  the  idea  that  such  change  could 
be  made,  than  in  making  the  necessary  mechanical 
alterations. 

In  such  a  case,  and  with  all  subjects  of  patents, 
the  courts  require  that  the  alleged  invention  or 
discovery  be  one  that  is  not  obvious  to  the  ordinary 
skilled  workman  in  the  particular  art,  and  they 
hold  it  must  be  so  far  from  obvious  as  to  require  the 
exercise  of  the  inventive  faculty.  The  new  use 
must  be  so  far  from  obvious  from  a  knowledge  of  the 
old  use  of  the  machine,  that  it  would  not  occur  to 
the  ordinary  skilled  workman  in  an  art. 

The  substitution  of  one  old  material  for  another 
may  be  patentable,  although  ordinarily  it  is  not 
patentable.  The  substitution  of  rubber  in  the  stud 
of  a  stocking  supporter  for  metal  or  wood,  was  held 
to  be  patentable,  because  it  made  a  successful  sup- 
porter which  would  neither  let  the  stocking  slip  nor 
tear  it,  and  this,  although  everyone  knew  that  rub- 


UNIVERSITY 


SUBJECT,    NATURE    AND   CLAIM  25 

ber  clings  to  cloth  and  would  not  tear  it  as  readily  as 
metal.  This  was  an  exceptional  case,  however, 
because  the  invention  although  greatly  desired  and 
long  striven  for,  had  not  before  been  produced. 

The  Patent  Office  recently  held  it  to  be  patentable 
to  substitute  forged  steel  for  cast  steel  in  a  one-piece 
body  of  a  safe.  It  may  be  patentable  to  use  an  old 
process  for  a  new  purpose,  just  as  much  as  to  use 
an  old  machine. 

There  was  a  peculiar  construction  of  tooth  which 
had  been  used  in  a  horse  rake.  A  tooth  of  like 
construction  was  used  in  a  weeding  machine,  but 
in  the  weeding  machine  it  had  an  action  which,  if 
present  in  the  horse  rake,  would  have  been  a  dis- 
advantage. It  was  held  that  it  was  patentable 
to  use  the  old  tooth  in  the  weeding  machine. 

In  finishing  diamonds  of  the  larger  sizes  and 
poorer  colors,  it  is  customary  to  divide  the  diamond 
into  a  number  of  pieces  to  make  several  smaller 
diamonds,  because  the  poor  color  is  less  noticeable 
in  a  smaller  diamond  than  in  a  larger  one  and  be- 
cause there  is  little  sale  for  large  diamonds  of  poor 
color.  A  patent  was  obtained  for  a  process  of 
dividing  the  larger  diamonds  into  smaller  diamonds, 
by  which  a  considerably  larger  weight  of  smaller 
diamonds  was  obtained  than  by  the  previous  pro- 
cesses for  this  purpose.  In  defense  to  a  suit  for 
infringement,  it  was  shown  that  the  same  procedure 


26  PATENTS   IN   MANUFACTURING 

was  old  in  sawing  up  wood  for  certain  purposes,  and 
that  the  old  wooden  procedure  was  for  the  purpose 
of  saving  material.  The  court,  however,  held  that 
diamond  cutting  and  wood  sawing  were  so  far  from 
being  analogous  arts,  that  the  old  wood  process  did 
not  invalidate  the  diamond  process. 

There  is  no  rule  by  which  all  cases  can  be  judged, 
but  each  case  is  decided  on  its  own  merits.  If  an 
invention  has  long  been  sought  for  without  success, 
the  courts  will  usually  sustain  the  patent,  no  matter 
how  obvious  the  invention  appears  after  it  has  been 
disclosed. 

THE  NATURE  OF  A  PATENT. 

A  patent  is  a  public  grant,  in  the  nature  of  a  con- 
tract between  the  Government  and  the  inventor. 
The  inventor  on  his  part  is  required  to  disclose 
fully  a  new  and  useful  invention  or  discovery  which 
he  has  made  himself.  If  the  invention  is  not  new 
to  the  public  at  the  time  the  inventor  makes  his 
invention,  then  the  inventor  has  given  nothing  to 
the  public  which  it  did  not  already  have.  If  the 
inventor  has  kept  back  some  essential  part  of  the 
invention,  so  that  he  has  not  fully  put  the  public 
into  possession  of  a  knowledge  of  the  invention;  if 
the  invention  is  not  operative,  or  is  injurious  to 
the  public  health  or  morals,  so  that  it  is  not  useful ; 
if  the  patentee  did  not  invent  or  discover  the  inven- 


SUBJECT,    NATURE    AND   CLAIM  27 

tion,  but  learned  of  it  from  others — then  in  all 
these  cases  he  has  not  given  the  public  a  proper 
consideration  for  the  patent,  and  the  patent  is 
invalid. 

The  law  also  requires  that  the  invention  shall  not 
have  been  described  in  a  printed  publication  or  have 
been  in  public  use  or  on  sale  for  more  than  two  years 
before  the  inventor  filed  his  application. 

While  a  prior  public  use  of  an  invention  will 
invalidate  a  patent,  a  prior  secret  use  of  an  inven- 
tion will  not  invalidate  a  patent  to  a  subsequent 
original  inventor.  The  reason  is  that  the  public, 
not  having  had  access  to  the  secret  use,  may  never 
know  of  it,  and  is  no  better  off  than  if  the  invention 
had  never  been  made,  and  that  knowledge  of  the 
invention  may  pass  out  of  existence  by  the  death  of 
those  who  practice  it  secretly.  Therefore,  the  law 
rewards  the  subsequent  inventor,  who  not  only 
makes  the  invention  but  gives  a  knowledge  of  it 
to  the  public.  For  instance,  there  was  a  man  who 
invented  a  shoe-making  machine,  and  he  not  only 
invented  it,  but  he  built  a  number  of  the  machines 
and  stored  them  away.  His  machine  was  useful 
only  in  connection  with  another  machine  on 
which  the  patent  (which  belonged  to  someone  else) 
had  not  yet  expired.  He  therefore  could  not  sell 
his  machine  until  the  patent  on  the  prior  machine 
expired,  and  if  he  took  the  patent  out  on  his  own 


28  PATENTS   IN   MANUFACTURING 

machine  before  the  expiration  of  the  earlier  patent, 
the  portion  of  the  life  of  his  patent  overlapping  the 
earlier  patent  would  be  unproductive.  Restored 
his  machines  away,  intending  to  wait  the  expiration 
of  the  patent  and  then  to  patent  his  machine  and 
put  it  on  the  market.  While,  however,  he  was 
concealing  his  machines,  another  inventor  invented 
the  same  machine  and  applied  for  a  patent.  In 
a  contest  which  subsequently  arose,  the  second  in- 
ventor was  awarded  the  patent. 

A  patent  consists  of  a  deed,  signed  and  sealed 
by  the  Commissioner  of  Patents,  granting  to  the 
inventor  the  exclusive  right  for  seventeen  years  to 
make,  use,  and  sell  the  invention,  and  referring  to 
the  attached  specifications  and  drawings  (if  there 
be  drawings)  for  a  disclosure  and  definition  of  the 
invention. 

The  grant  of  a  patent  purports,  as  just  stated,  to 
give  the  inventor  the  right  to  make,  use,  and  sell 
the  invention;  but  in  legal  effect  it  really  gives  him 
only  the  exclusive  right  to  prevent  others  from 
making,  using,  and  selling  the  invention.  If  his 
invention  happens  to  embody  the  principle  of  some 
invention  that  is  covered  by  a  previous  patent,  the 
owner  of  the  previous  patent  can  prevent  the  mak- 
ing, using,  and  selling  of  any  embodiment  of  the 
later  invention  using  the  earlier  principle,  and  the 
later  patentee  must  either  make  terms  with  the 


SUBJECT,    NATURE    AND   CLAIM  29 

earlier  patentee  or  wait  until  the  earlier  patent  is 
dead.  But  the  later  patentee  can  prevent  the 
earlier  patentee  or  anyone  else  from  using  the  later 
invention  during  the  life  of  the  later  patent.  This 
situation  arose  when  Edison,  Blake,  and  Berliner 
improved  the  Bell  telephone.  Their  telephones 
were  immeasurably  better  than  Bell's  telephone, 
and  yet  they  all  embodied  the  principle  which  Bell 
had  patented.  Therefore,  none  of  these  improvers 
could  use  his  telephone  without  Bell's  permission, 
and  the  result  was  that  their  patents  came  under 
the  control  of  the  owners  of  the  Bell  patents. 

THE  CLAIM  OF  A  PATENT. 

As  some,  and  even  the  greater  part,  of  the  ma- 
chine, or  other  device  shown  in  a  patent  may  be 
old  and  not  patentable,  and  the  part  invented  by 
the  patentee  may  be,  and  usually  is,  less  than  the 
whole,  the  patentee  is  required  to  state  in  terms 
just  what  his  invention  consists  in,  and  such  a 
statement  or  statements  are  called  "  claims. " 
This  is  so  that  the  public  may  know  what  it  is 
free  to  make,  use  and  sell,  and  what  it  must  let 
alone.  In  the  early  days  of  our  patent  system 
there  was  no  way  by  which  it  could  be  told  from 
the  patent  itself  what  was  public  property  and  what 
was  not,  and  the  patent  was  held  to  cover  all  that  it 
showed,  minus  whatever  the  defense  showed  to  be 


30  PATENTS   IN   MANUFACTURING 

old.  This  was  so  unsatisfactory  a  method  that  the 
patentee  was  afterwards  required  to  point  out  the 
part,  improvement,  or  combination  to  which  his 
improvement  related,  and  it  is  the  clauses  in  which 
he  thus  delineates  his  invention  that  are  called 
"claims." 

The  claims  are  the  measure  of  the  grant,  the 
latter  (but  for  the  name  of  the  patentee  and  the 
title  of  the  invention)  being  the  same  in  all  patents. 
There  is  no  piece  of  English  composition  that  is 
more  generally  misunderstood  than  the  claim  of 
a  patent.  But  the  general  nature  of  a  claim  (which 
is  all  I  propose  to  treat  in  this  chapter)  is  not  beyond 
the  comprehension  of  the  layman. 

A  claim  is  not  a  statement  of  advantages  of  the 
invention,  but  it  is  a  more  or  less  precise  technical 
description  of  the  invention.  A  strange  thing  about 
a  claim  is,  that  the  more  it  says,  the  less  it  means. 
As  a  specific  example:  suppose  John  Doe  invented  a 
turret  lathe,  consisting  of  a  bed  having  a  head-stock 
on  one  end,  a  spindle  journaled  in  the  head-stock 
and  a  chuck  on  the  spindle,  a  slide  mounted  on  ways 
on  the  bed,  a  turret  on  the  slide,  a  series  of  tools  in 
the  turret,  a  rack  on  the  slide  engaged  by  a  pinion 
on  the  bed,  and  a  hand  wheel  for  turning  the  pinion, 
so  that  the  slide  and  turret  could  be  advanced  to 
cause  each  tool  to  engage  the  work.  His  claim 
might  read  as  follows: 


SUBJECT,    NATURE    AND   CLAIM  31 

I  claim  a  machine  tool  consisting  of  the  combina- 
tion of  a  bed  having  ways,  a  head-stock  on  said  bed, 
a  spindle  journaled  in  said  head-stock,  a  chuck  on 
said  spindle,  a  slide  mounted  on  said  ways,  a  turret 
revolubly  mounted  on  said  slide,  a  series  of  tools 
mounted  in  said  turret,  a  rack  on  said  slide,  a  pinion 
journaled  on  said  bed  and  engaging  said  rack,  and  a 
hand-wheel  for  turning  said  pinion,  whereby  a 
piece  of  work  may  be  secured  in  and  revolved  by  said 
chuck,  whereby  said  turret  and  tools  may  be  advanced 
against  and  retracted  from  the  work,  and  whereby 
said  turret  may  be  turned  to  bring  its  various  tools 
into  cutting  position. 

Now  suppose  Doe's  turret  lathe  was  the  first 
machine  ever  invented  in  which  the  work  was 
revolved,  and  a  tool  mechanically  held  on  a  slide 
was  moved  against  the  work.  The  principle  of  his 
invention,  stated  as  broadly  as  that,  is  found  in  a 
lathe  without  a  turret;  in  a  boring  mill;  in  a  pipe- 
threading  or  cutting  machine,  and  other  machines ; 
and  under  the  supposition  that  his  was  the  first 
machine  to  move  a  tool  mechanically  against  a 
mechanically-revolved  piece  of  work,  all  of  these 
other  enumerated  machines  are  supposed  to  have 
been  invented  after  his  machine.  But  they  are  not 
described  by  his  claim;  because,  for  instance,  they 
do  not  have  the  turret  with  its  series  of  tools.  So 
the  courts  would  hold  that  they  were  not  his  inven- 
tion as  stated  in  his  claim.  And  yet  they  all  mani- 
festly use  his  principle  of  mechanically  revolving 


32  PATENTS   IN   MANUFACTURING 

the  work,  and  moving  a  mechanically-held  tool 
against  the  work. 

The  courts  will  not  allow  a  patentee  who  states 
in  his  claim  that  his  invention  consists  of  the  com- 
bination of  five  elements,  to  claim  infringement  by 
a  machine  that  has  only  four  of  those  elements,  and 
has  no  equivalent  of  the  fifth  element.  While 
they  will  imply  or  read  an  element  into  a  claim  from 
the  specification,  if  such  element  is  necessary  to 
make  the  combination  stated  in  the  claim  complete 
and  operative,  and  thus  save  the  claim  from  being 
void,  they  will  never  read  an  element  out  of  a  claim. 
So,  although  the  claim  above  is  a  fairly  good  word- 
picture  of  the  machines  which  embodies  Doe's 
invention,  it  is  evident  it  does  not  protect  the 
principle  or  essence  of  the  invention. 

Suppose,  now,  the  claim  read  as  follows: 

I  claim  a  machine  consisting  of  the  combination  of 
a  frame,  means  mounted  on  said  frame  for  revolving 
a  piece  of  work,  guides  on  said  frame  and  extending 
toward  the  position  of  the  work,  a  part  mounted  in 
said  guides,  a  tool  on  said  part,  and  means  for  mov- 
ing said  part  to  carry  the  tool  against  the  work. 

This  claim  is  just  as  true  a  description  of  the  Doe 
lathe,  so  far  as  it  goes,  as  was  the  first  claim,  and 
yet  it  is  an  equally  true  description  of  a  lathe  with- 
out a  turret,  of  a  boring  mill,  and  of  a  pipe-cutting 
or  a  pipe-threading  machine.  So  that  Doe  could 


SUBJECT,    NATURE    AND    CLAIM  33 

justly  claim  those  machines  were  within  his  mo- 
nopoly and  that  they  could  not  be  made,  used,  or 
sold  without  his  consent  while  his  patent  was  in 
force. 

The  popular  idea  is  that  the  more  complete  a 
description  a  claim  is  of  the  particular  embodiment 
of  the  invention  shown  in  the  patent,  the  better 
claim  it  is ;  but  the  example  of  the  Doe  claim  shows 
the  fallacy  of  this  idea.  It  is  as  though  the  claim 
were  a  bill  of  sale  giving  title  to  cattle  on  a  large 
Texas  ranch.  If  it  gave  title  to  "  all  the  short-horn 
Durham  steers  having  one  white  forefoot  and  three 
red  feet,"  the  purchaser  would  get  very  few  cattle. 
If,  however,  the  bill  of  sale  gave  title  to  "all  the 
live  stock"  on  the  ranch,  the  purchaser  would  not 
only  get  all  the  short-horn  steers  with  only  one 
white  foot,  but  he  would  get  all  the  steers  of  every 
description,  and  all  the  heifers,  bulls,  horses,  and 
pigs  there  might  be  there. 

The  mistake  arises  from  supposing  the  best  form 
of  claim  to  be  a  detail  description  of  the  particular 
embodiment  of  the  invention  shown  in  the  patent, 
when  it  should  be  a  description  of  every  class  of 
machines  which  embodies  the  principle  of  the  inven- 
tion, whether  or  not  the  details  not  essential  to  that 
principle  are  copied.  In  other  words,  the  claim  is 
not  a  list  of  elements,  whose  virtue  is  greater  the 
larger  the  number  of  elements  enumerated;  but  it 


34  PATENTS   IN   MANUFACTURING 

is  a  description  of  a  class  of  combinations  of  ele- 
ments, and  the  fewer  elements  stated,  the  larger  the 
class  of  machines  is  likely  to  be  in  which  that  combi- 
nation of  elements  is  found. 

Perhaps  another  simile  may  not  be  amiss.  A 
claim  is  like  giving  one  the  title  to  everything  that 
can  be  found  that  will  fit  into  a  box.  Now  if  no 
particular  kind  of  box  were  specified,  the  grantee 
would  have  a  very  valuable  monopoly.  Every- 
thing that  would  go  into  a  square,  or  a  round  box,  or 
an  oval  box,  or  into  a  star-shaped  box  would  be  his. 
But  if  the  box  were  stated  to  be  a  round  box  having 
a  pin  set  up  in  the  centre  of  its  bottom  and  extending 
up  to  a  level  with  the  top  of  the  box,  it  is  evident 
nothing  could  be  put  into  the  box  but  round  things 
having  a  hole  through  the  middle,  and  the  grantee 
would  have  a  very  much  less  desirable  monopoly. 

The  popular  misunderstanding  is  doubtless  due 
to  the  fact  that,  as  before  stated,  the  actual  lan- 
guage of  a  patent  is  a  grant  of  the  exclusive  right  to 
make,  use,  and  sell  the  invention,  while  its  legal 
effect  is  only  a  grant  of  the  exclusive  right  to  pre- 
vent others  from  making,  using,  and  selling  the 
invention.  The  language  of  the  patent  is  to  this 
effect:  "  John  Doe  is  hereby  granted  the  exclusive 
right  to  make,  use  and  sell  a  machine  consisting  of 
the  combination  of  elements  A,  B,  C,  etc.,"  and  the 
longer  the  list  of  elements,  the  larger  appears  the 


SUBJECT,    NATURE    AND   CLAIM  35 

monopoly  granted.  The  legal  effect,  however,  is: 
"  John  Doe  is  hereby  granted  the  exclusive  right  to 
prevent  others  from  making,  using  or  selling  any 
machine  consisting  of  the  combination  of  elements 
A,  B,  C,  D,  etc.,"  and  the  longer  the  list  of  elements, 
the  fewer  machines  there  will  be  that  will  answer 
the  description  and  come  within  his  monopoly. 

An  instance  of  a  brief  claim  is  the  following  from 
a  patent  recently  issued  by  the  Patent  Office: 

A  safe,  consisting  of  a  combination  of  a  body 
formed  of  a  single  piece  of  forged  steel,  with  a  door. 

This  is  the  patent  referred  to  on  page  25  as  cover- 
ing the  substitution  of  one  old  material  for  another 
in  a  one-piece  safe  body. 

The  Supreme  Court  of  the  United  States  has  said 
that  the  claim  of  a  patent  is  one  of  the  most  difficult 
pieces  of  English  composition  to  write.  It  is  often 
thought  that  the  particular  wording  of  a  patent  is 
not  important,  the  skill  required  being  in  enforcing 
the  patent  in  court;  but  it  must  now  be  clear  that 
there  is  great  opportunity  for  skill  and  foresight 
in  drawing  the  patent.  A  well  drawn  patent  may 
make  plain  sailing  in  court,  while  a  poorly  drawn 
patent  often  has  a  hole  in  it  through  which  serious 
competition  can  escape. 

It  will  be  apparent  from  what  has  been  said  that 
there  is  much  opportunity  for  the  exercise  of  skill 


36  PATENTS   IN   MANUFACTURING 

and  ingenuity  in  the  preparation  of  an  application 
for  patent.  The  patent  can  be  so  prepared  that 
any  substantial  variation  from  the  embodiment  of 
the  invention  which  is  illustrated  in  the  patent,  will 
avoid  the  patent,  and  thus  a  monopoly  of  little 
value  be  obtained.  On  the  other  hand,  it  can  be 
so  drawn  that  the  soul  of  the  invention,  however 
embodied,  will  be  covered  by  the  patent.  In  fact, 
in  drawing  an  application  for  patent  one  should  be 
capable  of  foreseeing  how  an  ingenious  competitor 
would  vary  the  inventor's  embodiment  of  the 
invention  in  order  to  retain  its  advantages,  while 
apparently  not  using  the  invention.  A  well  pre- 
pared patent  tends  to  prevent  litigation,  because  if 
it  is  drawn  with  sufficient  skill  there  may  be  no 
opportunity  whatever  to  argue  that  the  alleged 
infringing  device  does  not  come  within  the  mo- 
nopoly granted. 

PROCEEDINGS  IN  THE  PATENT  OFFICE. 

In  the  Patent  Office,  the  examining  force  is 
grouped  into  forty  divisions,  and  the  various  arts 
are  assigned  to  one  or  more  of  these  divisions.  In 
this  manner,  all  applications  for  inventions  relating 
to  a  certain  art  or  sub-division  of  that  art* are 
examined  by  a  single  man  or  group  of  men,  and  an 
opportunity  is  afforded  to  become  highly  proficient 
in  the  particular  art.  The  examiners  compare  the 


SUBJECT,    NATURE    AND   CLAIM  37 

claims  of  an  application  with  the  patents  of  the 
prior  art,  and  if  they  think  the  claims  are  broad 
enough  to  include  anything  shown  in  the  prior  art, 
or  what  is  described  in  any  book  or  foreign  patent 
or  any  prior  public  use,  of  which  they  know,  they 
reject  the  claims  on  these  supposed  anticipations. 
On  behalf  of  the  inventor,  the  examiner  must  then 
either  be  convinced  that  he  is  wrong  and  induced 
to  withdraw  his  rejection,  or  the  claims  must  be 
changed  to  avoid  the  examiner's  objection.  If  the 
claims  are  to  be  changed,  it  is,  of  course,  very 
desirable  to  keep  them  broad  enough  to  grant  a 
valuable  monopoly,  while  narrowing  them  suffi- 
ciently to  avoid  the  objection.  From  the  rejection 
of  the  primary  examiner,  an  appeal  can  be  taken  to 
a  Board  of  Appeals,  consisting  of  three  members, 
and  from  them  to  the  Court  of  Appeals  of  the  Dis- 
trict of  Columbia.  There  are  certain  other  moves 
which  can  be  made  in  the  courts  to  obtain  a  patent, 
if  none  of  the  foregoing  moves  is  successful. 


CHAPTER  III. 
WHAT  PROTECTION  A  PATENT  AFFORDS. 

THE  life  of  a  patent  is  seventeen  years  from 
the  date  of  publication,  unless  (as  is  the  case 
of  some  patents  granted  before  a  recent  change  in 
the  law)  the  term  is  shortened  by  the  earlier  expira- 
tion of  a  foreign  patent  for  the  same  invention  by 
the  same  inventor. 

The  terms  of  patents  can  be  extended  only  by 
special  acts  of  Congress,  and  no  such  extension  has 
been  enacted  for  many  years. 

It  may  seem  inequitable,  when  an  inventor  has 
not  received  a  fair  return  after  seventeen  years  of 
the  life  of  his  patent,  not  to  grant  him  an  extension ; 
but  in  order  that  inventing  may  be  stimulated,  it 
is  necessary  that  patents  should  have  a  definite 
term  beyond  which  they  will  not  be  extended. 
No  one  is  going  to  spend  money  improving  an  art 
on  the  expectation  that  on  a  certain  date  he  will  be 
at  liberty  to  use  his  improvement,  if  the  parent 
patent  is  liable  to  be  extended  for  a  second  term  of 
seventeen  years.  During  this  second  term  of  the 
parent  patent,  the  improvement  patent  would  not 
be  of  any  use  to  the  improver  unless  he  could  make 

38 


THE  PROTECTION  A  PATENT  AFFORDS      39 

terms  with  the  first  patentee,  and  there  might  even 
be  a  period  at  the  lat.ter  end  when  the  improve- 
ment patent  would  be  dead  and  the  parent  patent 
in  force,  so  that  the  parent  patentee  could  use  the 
improvement  invention  without  tribute. 
The  grant  of  a  patent  is  in  the  following  language : 

These  Letters  Patent  are  to  grant  unto  John  Doe, 
his  heirs  or  assigns  for  the  term  of  seventeen  years 
from  the  fifteenth  day  of  May,  one  thousand  nine 
hundred,  the  exclusive  right  to  make,  use  and  vend 
the  said  invention  throughout  the  United  States  and 
the  Territories  thereof. 

This,  as  was  pointed  out  in  the  first  article, 
means  the  right  to  exclude  all  others  from  any  mak- 
ing, using  or  selling  of  the  patented  articles. 

To  make,  to  use,  and  to  sell  are  the  only  ways  in 
which  an  invention  is  capable  of  commercial  enjoy- 
ment. The  patentee  can,  if  he  wishes,  sit  down  and 
not  only  not  use  the  invention  himself,  but  prevent 
everyone  else  from  making  or  using  or  selling  the 
patented  thing.  If  anyone  else  makes,  uses,  or 
sells  the  subject  of  the  patent,  the  courts  will  grant 
the  patentee  an  injunction  against  further  infringe- 
ment and  a  recovery  of  the  profits  made. 

MAKING,  USING  AND  SELLING. 

Each  of  these  three  rights,  to  make,  to  use,  and  to 
sell,  is  a  separate  monopoly  and  may,  by  proper 


40  PATENTS    IN    MANUFACTURING 

instruments,  be  granted  or  sold  separately.  For 
instance:  a  patentee  of  a  machine  could  grant  to  a 
manufacturer  the  exclusive  right  to  make  the 
machines  for  him  (of  course  under  proper  restric- 
tions as  to  price,  etc.)  and  the  manufacturer  would 
be  an  infringer,  if  he  used  the  machines  or  sold  them 
to  others.  The  patentee  could  then  grant  to  a 
jobber  the  exclusive  right  to  sell  the  machines 
(reserving  proper  compensation  to  himself  such  as 
a  percentage  of  the  profit)  and  the  jobber  would  be 
an  infringer,  if  he  either  made  or  used  the  machine. 
The  exclusive  right  to  use  the  machines  could  then 
be  granted  to  a  given  consumer,  who  in  turn  would 
have  no  right  to  make  or  sell  the  machines. 

RIGHTS  CAN  BE  RESTRICTED  AS  TO  TERRITORY  OR 
TIME. 

The  right  to  make,  or  that  to  sell,  or  that  to  use 
can  be  granted  for  certain  restricted  territory  in- 
stead of  the  entire  United  States.  Such  rights  can 
also  be  restricted  as  to  time.  A  certain  patentee 
of  machines  for  making  concrete  building  blocks 
has  his  machines  made  by  certain  machinists,  who 
cannot  sell  or  use  the  machines.  The  patentee 
then  sells  the  machines  to  persons  in  different  cities 
or  counties  all  over  the  United  States,  each  machine 
being  sold  under  restrictions  which  make  its  use 
outside  of  a  given  city  or  county  an  infringement, 


THE  PROTECTION  A  PATENT  AFFORDS      41 

so  that  each  purchaser  of  a  machine  has  no  competi- 
tion from  that  make  of  machine  within  his  particu- 
lar territory.  Even  the  patentee  could  not  use  a 
machine  within  a  county  he  has  sold.  A  San 
Francisco  manufacturer  of  a  certain  vault  light  has 
sold  the  exclusive  rights  east  of  the  Mississippi  to 
a  New  York  manufacturer,  because  the  San  Fran- 
cisco manufacturer  cannot  well  handle  the  Eastern 
territory. 

RIGHTS  TO  USE  SAME  INVENTION  IN  DIFFERENT 
INDUSTRIES. 

The  exclusive  right  to  use  an  invention  for  each 
of  several  given  purposes  can  be  separately  sold. 
For  instance,  a  patentee  of  a  process  for  making 
watch  dials  not  only  sold  the  exclusive  right  to 
make  watch  dials  by  that  process,  but  he  also  sold 
to  a  separate  company  the  exclusive  right  to  use 
the  process  in  making  enamelled  signs,  under  the 
same  patent.  The  watch  manufacturer  would 
have  been  an  infringer  if  he  had  made  signs,  and 
vice  versa,  the  sign  manufacturer  could  have  been 
restrained  from  making  watch  dials. 

Recently  a  process  of  drying  gun-powder  was 
found  to  be  applicable  to  drying  breakfast  foods, 
and  the  owners,  after  getting  all  they  had  ever 
looked  for  from  the  patent  from  the  gun-powder 
rights,  reaped  a  second  and  unexpected  harvest 


42  PATENTS   IN   MANUFACTURING 

from  the  sale  of  the  rights  for  breakfast  foods.  The 
rights  under  a  patent  for  a  machine  can  be  divided 
in  the  same  way. 

RESTRICTIONS  AS  TO  PRICE,  USES,  RESELLING,  ETC. 

A  license  under  a  patent  may  not  only  be  restric- 
ted to  certain  territory. and  for  a  certain  time,  but 
the  number  of  specimens  of  the  patented  invention 
to  be  made  by  the  licensee  can  be  specified,  the 
length  of  time  a  specimen  is  to  be  used,  the  price 
at  which  the  patented  things  are  to  be  sold,  the 
quality  and  material  can  be  provided  for,  and  other 
similar  conditions  imposed  and  enforced. 

Particular  specimens  of  the  patented  invention 
can  be  sold  under  various  conditions  that  will  bind 
the  purchaser  who  has  notice  of  the  restrictions. 
In  fact,  the  variety  of  conditions  than  can  be  imposed 
under  a  patent  is  too  large  to  permit  a  complete 
enumeration.  Some  idea  of  the  possibilities  can 
be  had  from  these  examples: 

The  owners  of  a  patent  for  a  machine  for  setting 
or  fastening  buttons  on  shoes,  leased  or  licensed 
the  machines  on  condition  that  the  machines  should 
be  used  only  with  button  fasteners  to  be  bought  of 
the  patentees.  The  fastener  was  not  patented, 
and  the  condition  in  the  license  gave  the  paten- 
tees a  practical  monopoly  of  making  the  unpatented 
fastener,  because  the  machine  was  so  superior  to 


THE  PROTECTION  A  PATENT  AFFORDS      43 

hand  methods  of  setting  the  fasteners  that  the 
fasteners  were  used  only  in  the  patented  machines ; 
and  yet  the  court  sustained  the  license  as  valid. 
This  form  of  license  has  also  been  successfully 
used  with  button-setting  and  shoe-nailing  machines 
that  formed  the  fasteners  or  nails  out  of  simple 
wire,  the  licensees  being  compelled  to  buy  the  wire 
of  the  owners  of  the  patents. 

The  right  to  sell  phonographs  has  been  restricted 
to  a  certain  territory  and  to  selling  at  a  certain  price. 
The  owners  of  the  patent  did  not  want  a  low  price  in 
the  prescribed  territory  to  interfere  with  a  good 
price  elsewhere. 

A  certain  machine  for  making  a  large  number  of 
copies  of  letters  is  sold  under  a  license  printed  on 
the  machine  requiring  that  all  the  supplies  for  use 
on  the  machine  shall  be  bought  from  the  makers 
of  the  machine. 

The  only  commercial  form  of  calcium  carbide  is 
sold  in  packages  having  printed  on  them  a  license 
permitting  the  use  of  the  carbide  only  in  lamps, 
and  not  for  other  purposes. 

Ties  for  cotton  bales  have  been  sold  under  a 
restriction  that  they  should  not  be  used  a  second 
time.  The  Supreme  Court  of  the  United  States 
held  that  the  restriction  was  a  valid  one. 

Perhaps  the  most  far-reaching  use  of  the  license 
is  in  the  case  of  a  certain  company  making  machin- 


44  PATENTS   IN   MANUFACTURING 

ery  for  manufacturing  shoes.  It  has  a  patent  on 
the  most  effective  method  of  sewing  the  upper  of 
a  shoe  to  the  sole.  There  are  quite  a  number  of 
other  related  machines,  besides  the  one  by  which 
this  process  is  practiced,  that  are  used  in  the  making 
of  the  shoe ;  but  these  are  not  covered  by  any  funda- 
mental patents,  so  that  other  manufacturers  can 
make  equally  good  machines  or  nearly  so.  In  order 
to  secure  a  monopoly  of  the  entire  system  of 
machines,  the  company  in  question  refuses  to  sell 
its  machines  which  work  according  to  the  patented 
method,  but  it  will  only  lease  them,  and  then  only 
on  condition  that  the  sewing  machines  shall  not 
be  used  with  any  other  of  the  related  machines 
except  such  as  are  made  by  the  same  company.  In 
this  way,  an  effective  monopoly  of  the  entire  system 
is  maintained.  Payment  is  taken  in  the  form  of  a 
royalty  on  each  pair  of  shoes  operated  upon. 

There  are  many  other  conditions  embodied  in  the 
same  lease.  The  title  to  the  machines  remains  in 
the  owners  of  the  patent.  The  licensee  not  only 
expressly  admits  the  validity  of  the  patent  on  the 
method  of  sewing  shoes,  but  he  admits  the  validity 
of  a  large  number  of  other  patents  which  are  enu- 
merated in  the  lease,  and  he  agrees  that  the  termina- 
tion of  the  lease  shall  not  release  or  discharge  him 
from  his  admission  of  the  validity  of  the  enumerated 
patents.  The  shoe  manufacturer  can  neither  take 


THE  PROTECTION  A  PATENT  AFFORDS      45 

any  part  off  of  the  leased  machines  nor  add  any 
improvement  to  them.  He  is  to  pay  the  owner  com- 
pany for  keeping  the  machines  in  good  repair,  and 
to  obtain  all  repair  parts  from  such  company.  He 
is  to  make  only  certain  specified  types  of  shoes. 
He  is  to  supply  original  reports  from  the  operatives 
of  the  machines  as  to  the  number  of  shoes  operated 
upon,  and  such  reports  are  to  be  sworn  to  if  required. 
He  is  to  use  no  other  machines  than  those  of  the 
lessor  company  for  doing  the  specified  operations — 
that  is,  he  cannot  run  part  of  his  factory  with  the 
lessor's  machines  and  part  with  machines  bought 
elsewhere,  whether  or  not  these  latter  machines  are 
used  on  shoes  operated  on  by  the  leased  sewing 
machine — on  penalty  of  having  all  machinery 
leased  from  such  company  removed  from  his  fac- 
tory. The  shoe  manufacturer  cannot  terminate 
the  license,  but  only  the  owner  company. 

TRADE  COMBINATIONS  UNDER  PATENTS. 

The  power  which  a  patentee  has  to  dictate  the 
conditions  under  which  his  monopoly  may  be  exer- 
cised has  been  used  to  form  trade  agreements 
throughout  practically  entire  industries,  and  if  the 
purpose  of  the  combination  is  primarily  to  secure 
benefit  from  the  patent  monopoly,  the  combina- 
tion is  legitimate.  Under  such  combinations  there 
can  be  effective  agreements  as  to  prices  to  be  main- 


46  PATENTS   IN    MANUFACTURING 

tained,  with  penalties  for  violation  of  the  agree- 
ment. The  output  for  each  member  of  the  com- 
bination can  be  specified  and  enforced  under  penal- 
ties, and  many  other  benefits  which  were  sought 
to  be  secured  by  trade  combinations  made  by  simple 
agreements  can  be  added.  Such  trade  combina- 
tions under  patents  are  the  only  valid  and  enforce- 
able trade  combinations  that  can  be  made  in  the 
United  States.  There  are  many  instances  of  such 
combinations. 

The  numerous  manufacturers  of  shoe  lasts  in 
the  United  States  are  many  of  them  combined 
into  a  Last-Maker's  Association  by  means  of  li- 
censes under  certain  patents,  and  this  association 
dictates  the  prices  at  which  the  lasts  are  to  be  sold, 
so  that  a  uniform  and  advantageous  standard  of 
prices  prevails. 

Nearly  all  the  manufacturers  of  rubber  tires  in 
the  United  States  were  recently  combined  by  means 
of  licenses  under  certain  patents,  and  while  the 
agreements  were  held  by  the  court  to  be  invalid 
because  of  two  conditions,  the  following  provisions 
were  held  to  be  valid:  Each  manufacturer  was  to 
pay  a  specified  royalty.  The  prices  were  fixed 
at  considerably  better  figures  than  had  before  pre- 
vailed in  the  market.  The  product  of  each  licensee 
was  limited  to  a  certain  per  cent  of  the  product  of 
all,  and  if  a  given  licensee  made  less  than  his  quota, 


THE  PROTECTION  A  PATENT  AFFORDS     47 

he  was  to  be  paid  a  certain  per  cent  on  the  value 
of  the  shortage,  and  if  he  made  more  than  his  quota, 
he  was  to  pay  a  largely  increased  royalty  on  the 
excess. 

The  manufacturers  of  sockets  for  electric  lamps 
are  combined  by  means  of  licenses  under  patents, 
and  the  manufacturers  of  chainless  bicycles  were 
combined  in  a  similar  manner. 

Manufacturers  and  importers  of  about  72  per 
cent  of  the  gasoline  automobiles  sold  in  the  United 
States  are  combined  by  means  of  licenses  under  a 
certain  patent.  The  licensees  pay  a  small  royalty, 
but  that  royalty  is  more  than  compensated  for  by 
the  savings  made  possible  in  the  conduct  of  their 
business  by  the  co-operation  with  other  manufac- 
turers. They  enjoy,  among  others,  the  following 
advantages  from  their  combination:  The  associa- 
tion has  agents  throughout  the  United  States  who 
will  sell  the  machines  made  by  any  member  of  the 
association,  but  they  cannot  sell  unlicensed  auto- 
mobiles. Each  member  of  the  association  has 
agreed  not  to  aid  or  abet  others  in  infringing  the 
patent,  wherefore  he  cannot  deal  with  an  agent 
selling  an  infringing  machine,  and  this,  although 
agents  do  not  directly  receive  licenses,  prevents 
their  handling  unlicensed  machines.  The  associa- 
tion maintains  a  traffic  department  in  charge  of  a 
specialist  in  that  branch,  an  experienced  freight- 


48  PATENTS   IN   MANUFACTURING 

traffic  manager,  and  through  it  secures  for  all  auto- 
mobile manufacturers  and  owners  the  proper  and 
best  freight  rates  and  transporation  facilities.  The 
association  arranges  exhibitions  and  public  tests 
for  the  benefit  of  its  members,  from  which  unlicensed 
manufacturers  infringing  the  patent  are  excluded, 
as  to  admit  unlicensed  manufacturers  would  indi- 
rectly be  an  infraction  of  their  covenant  under 
the  license  not  to  aid  or  abet  the  infringement  of 
the  patent.  The  members  of  the  association  have 
monthly  meetings,  at  which  there  is  an  interchange 
of  ideas  in  manufacturing,  very  greatly  to  the  bene- 
fit of  all  the  members.  The  association  has  agreed 
upon  some  standardization  of  parts  and  is  gradually 
effecting  more  such  economies.  If  several  mem- 
bers of  the  association  are  threatened  with  suit  under 
patents  owned  by  those  not  members  of  the  associa- 
tion, the  association,  through  its  concentration  of 
information,  is  in  a  better  position  to  judge  promptly 
and  well  of  the  controversy  and  to  determine  the 
best  action  to  take  to  prevent  mulcting  of  its 
members  or  to  compensate  worthy  patentees  fairly. 
The  individual  members  of  the  association  own  over 
425  patents.  If  one  member  finds  that  another 
member  of  the  association  is  infringing  his  patent, 
the  matter  can  be  adjusted  invariably,  owing  to 
intimacy  and  mutual  understanding  of  the  indi- 
vidual members,  either  by  a  discontinuation  of  the 


THE  PROTECTION  A  PATENT  AFFORDS     49 

infringement,  or  by  the  owner  of  the  patent  granting 
a  license  to  the  member  who  is  infringing.  If  a 
member  violates  his  agreement,  he  is  liable  to  have 
his  license  taken  away,  because  all  of  the  covenants 
which  he  has  entered  into  are  tied  up  with  the 
license  under  the  patent.  Thus,  the  licensees 
obtain  many  benefits,  besides  the  mere  right  to 
use  the  machine  of  the  patentee. 


CHAPTER  IV. 
OF  INFRINGEMENTS. 

A  PATENT  is  infringed  when  the  patented 
invention  is  either  made  or  used  or  sold  by  a 
person  not  having  any  title  in  the  patent,  or  not 
having  a  license  or  shop  right  under  the  patent. 
The  fact  that  the  infringer  did  not  know  of  the 
patent  is  no  defense  to  an  action  for  an  injunction. 
The  patent  is  a  public  record  of  which  everyone 
is  presumed  to  have  notice. 

The  infringer  is  generally  at  liberty  in  a  defense 
of  a  suit  for  an  injunction  to  show  that  the  patent 
is  invalid,  for  such  reasons  as  that  the  invention 
was  known  or  used  by  others  in  the  country  before 
the  patentee  invented  it,  or  that  it  was  in  public 
use,  or  described  in  a  printed  publication,  for  more 
than  two  years  before  the  patentee  filed  his  appli- 
cation for  patent.  I  have  before  pointed  out  that 
a  mere  secret  use  of  the  invention  before  the  pat- 
entee invented  it  will  not  be  a  defense  to  a  patent.  Or 
he  may  show  that  the  patentee  was  not  the  inventor 
of  the  invention,  but  that  he  learned  of  it  from 
others.  Or  he  may  show  that  the  patentee  aban- 
doned the  invention  before  taking  out  his  patent. 

50 


OP   INFRINGEMENTS  51 

There  are  other  defenses  which  can  be  availed  of, 
but  these  are  the  principal  defenses. 

A  patent,  being  a  public  grant,  is  presumed  to 
be  valid,  and  only  the  strictest  proof  of  a  prior 
knowledge  or  use  of  the  invention  will  avail  in 
defense.  In  fact,  the  same  strictness  in  this  matter 
is  required  as  in  proving  guilt  in  a  criminal  case. 
The  courts  will  only  hold  a  patent  to  be  invalid 
because  of  a  prior  use  of  the  invention,  where  the 
evidence  is  so  strong  as  to  convince  the  mind  beyond 
a  reasonable  doubt. 

I  said  that  the  infringer  was  generally  at  liberty 
to  set  up  these  defenses,  because  it  is  not  every 
infringer  who  will  be  heard  to  say  that  the  patent 
is  invalid.  For  instance,  if  the  infringer  has  pre- 
viously signed  an  agreement,  such  as  the  license 
for  the  Shoe  Machinery  Company  before  mentioned, 
in  which  he  has  admitted  the  validity  of  the  patent, 
the  court  will  not  hear  him  say  that  the  patent  is 
invalid.  If  the  infringer  has  sold  the  patent  to  the 
patentee,  then  again,  the  court  will  not  let  him  plead 
the  invalidity  of  the  patent,  although  that  defense 
may  be  open  to  all  the  rest  of  the  world 

A  man  invented  a  machine  and  sold  it  to  a  com- 
pany manufacturing  veneer  and  having  its  factory 
in  New  York.  The  inventor  afterwards  went  to 
another  city  and  offered  to  build  similar  machines 
for  another  company.  Before  it  was  discovered 


52  PATENTS   IN    MANUFACTURING 

what  he  was  doing,  he  had  his  machine  complete  and 
ready  to  ship  to  the  woods  where  it  was  to  be  used. 
The  company  owning  the  patent  learned  of  the 
situation  at  this  stage  and  applied  for  a  temporary 
restraining  order,  without  notice  to  the  patentee  or 
the  second  company,  to  prevent  use  of  the  machine 
and  its  shipment  to  the  woods.  The  restraining 
order  was  granted,  and  the  patentee  would  not 
have  been  heard  to  say  in  defense  that  the  patent 
was  invalid. 

An  infringer  cannot  escape  by  showing  that  he 
independently  conceived  of  the  invention  without 
knowledge  that  the  patentee  had  invented  it, 
unless  the  infringer  can  show  that  he  made  the 
invention  before  the  patentee  made  it.  Neither 
will  it  help  an  infringer  to  show  that  his  deviceis 
also  the  subject  of  a  patent  because  of  some  improve- 
ment which  he  has  introduced  over  the  invention  as 
shown  in  the  patent  sued  upon,  because  so  long  as 
he  uses  the  principle  of  the  invention  of  the  patent 
sued  upon,  he  infringes,  no  matter  how  much  of  an 
improvement  his  particular  embodiment  of  that 
principle  may  be.  This  point  will  be  more  fully- 
treated  in  the  chapter  on  Infringement. 

It  is  infringement  to  make,  use,  or  sell  what  is 
covered  by  only  a  single  claim  of  a  patent  having 
a  number  of  claims.  Each  claim  is  in  itself  a  sepa- 
rate monopoly. 


OF   INFRINGEMENTS  53 

INTERPRETATION  OF  THE  CLAIM  OF  A  PATENT. 

As  a  device  that  is  charged  with  infringing  a 
patent  is  seldom  a  Chinese  copy  of  the  embodiment 
of  the  invention  which  is  illustrated  in  the  patent, 
it  is  necessary  to  determine  what  is  the  scope  of 
the  claims  of  the  patent,  or  what  are  the  limits  of 
the  monopoly. 

The  terms  used  in  a  claim  are  often  capable  of 
several  different  meanings,  as  are  many  other 
words  of  the  English  language,  and,  therefore,  a 
claim  may  have  several  different  interpretations. 
The  claim  also  may  be  unskilfully  drawn,  and  in  a 
suit  for  infringement  the  court  has  to  determine 
what  is  the  exact  invention  that  was  sought  to  be 
protected  and  then  to  choose  that  one  of  the  several 
possible  interpretations  of  the  claim  which  will  most 
nearly  protect  the  invention.  It  is  a  fundamental 
rule  of  law  that  the  interpretation  of  the  claim 
which  is  most  favorable  to  the  patentee  shall  be 
chosen,  and  the  actual  invention  thus  protected  to 
its  full  measure  if  it  is  possible  to  do  so  without 
violence  to  the  meaning  of  the  language  of  the 
claim.  In  this  interpretation  the  courts  will  not 
allow  justice  to  be  perverted  because  of  an  unfor- 
tunate name  of  a  part.  It  is  the  office  or  function 
which  the  part  performs,  the  principle  on  which 
it  is  constructed,  and  the  mode  by  which  it  is  used 


54  PATENTS   IN   MANUFACTURING 

in  the  operation  of  the  invention,  that  is  regarded 
rather  than  the  mere  name  by  which  the  part  is 
designated  in  the  claim. 

The  precise  protection  which  a  patent  will  afford 
under  various  conditions  can  best  be  illustrated 
perhaps  by  examples.  It  is  the  idea  which  is 
shown  in  the  patent,  rather  than  the  particular 
embodiment  of  the  idea,  which  the  patent  protects. 

AN  INSTANCE  OF  AN  INVALID  CLAIM. 

Suppose  the  patent  in  question  illustrated  a 
shaper  consisting  of  a  pedestal  having  a  slide  on  it, 
upon  which  the  ram  carrying  the  tool  is  mounted, 
the  ram  of  course  moving  in  its  own  guideway  on 
the  slide,  and  the  work  being  mounted  on  a  table 
that  is  adjustable  on  the  pedestal  by  hand  screws. 
Suppose,  also,  that  the  slide  having  the  guideway  for 
the  ram  is  moved  between  each  two  strokes  of  the 
ram  to  feed  the  tool  for  the  new  cut.  Suppose  the 
claim  in  the  patent  were  as  follows : 

A  metal-working  tool,  consisting  of  the  combination 
of  a  frame  having  a  table  for  supporting  the  work,  a 
slide  carrying  a  tool,  and  means  for  causing  a  rela- 
tive reciprocation  of  the  tool  and  table. 

When  suit  for  infringement  was  brought,  the 
person  sued  would  be  at  liberty  to  plead  any  of  the 
defenses  enumerated  in  the  first  paragraph  under 
"  The  Nature  of  a  Patent,"  in  Chapter  II.  Suppose 


OF   INFKINGEMENTS  55 

the  defendant  showed  that,  before  the  invention  of 
the  shaper  by  the  patentee,  a  planer  of  the  ordinary 
type  had  been  made  and  publicly  used,  the  claim 
would  be  fully  answered  by  the  planer.  The 
planer,  it  is  true,  would  have  the  table  reciprocating 
and  the  tool  stationary  during  a  cut,  while  the 
shaper  would  have  the  tool  reciprocating  and  the 
table  stationary,  but  the  claim  merely  says  that  the 
tool  and  the  table  shall  have  a  relative  reciprocation, 
which  description  applies  to  the  tool  and  table  of 
the  planer  just  as  truly  as  to  those  in  the  shaper. 
This  claim  would  therefore  have  to  be  held  invalid, 
and  the  defendant  would  escape,  if  this  were  the 
only  claim. 

INFRINGEMENT  BY  A  STRUCTURE  AVOIDING  THE 

TERMS  OF  THE  CLAIM  BUT  EQUIVALENT 

TO  THE  PATENTED  STRUCTURE. 

A  carefully  drawn  patent,  however,  does  not 
depend  upon  a  single  claim  for  protection,  because 
of  just  such  contingencies  as  that  which  has  just 
been  pointed  out,  and  such  patents  usually  have 
a  series  of  claims  of  various  degrees  of  breadth  or 
scope,  so  that,  if  a  broad  claim  is  held  to  be  invalid, 
the  narrower  claims  may  be  resorted  to.  Suppose, 
then,  the  patent  contained  a  second  claim  as  follows : 

A  metal-working  tool  consisting  of  the  combination 
of  a  frame,  a  table  on  said  frame  for  the  work,  a  ram 


56  PATENTS   IN    MANUFACTURING 

carrying  a  tool,  a  guideway  for  said  ram,  means  for 
reciprocating  the  ram,  and  means  for  adjusting  said 
guideway  laterally  between  each  two  reciprocations 
of  the  ram. 

This  claim  would  not  be  anticipated  by  the  planer, 
because  it  states  that  the  tool  is  carried  by  the  ram 
or  moving  part  and  it  includes  "  means  for  recipro- 
cating the  ram"  which  are  not  found  in  the  planer. 

Suppose  the  machine  complained  of  had  the  ram 
moving  in  a  stationary  guideway  and  gave  the  feed 
motion  to  the  table,  instead  of  to  the  guideway  of 
the  ram.  The  machine  complained  of  would  then 
avoid  the  literal  terms  of  the  claim,  because  it 
would  have  no  means  for  adjusting  the  guideway 
of  the  ram  laterally  between  the  reciprocations  of 
the  tool.  If,  however,  the  patentee  of  the  shaper 
patent  were  the  first  ever  to  invent  a  shaper  of  any 
sort — that  is,  the  first  to  invent  a  machine  tool  in 
which  the  tool  has  a  straight-line  motion  and  the 
work  is  stationary  and  the  tool  moves  during  the 
cutting  stroke  of  the  tool — it  would  be  very  unjust 
if  the  supposed  infringing  machine  could  escape  the 
patent,  because  the  infringing  machine  would  have 
all  of  the  well-known  advantages  of  the  shaper, 
even  though  it  did  escape  the  literal  terms  of  the 
claim.  After  the  first  inventor  had  shown  how  to 
make  a  shaper,  it  would  be  comparatively  easy  for  a 
competitor  to  ring  such  a  change  on  the  patented 


OP    INFRINGEMENTS  57 

structure  as  that  which|we  have  supposed,   viz., 
to  feed  the  work  table  instead  of  the  ram. 

While  the  one  who  drew  the  claim  should  not  have 
limited  it  in  the  way  we  have  supposed,  in  actual 
practice  such  unfortunate  claims  are  very  commonly 
met  with,  and  the  reason  probably  is  that  the  drafts- 
man of  the  claim  has  before  him  the  inventor's 
particular  embodiment  of  the  invention  and  does 
not  have  enough  ingenuity  or  foresight  to  see  how 
an  infringer  could  embody  the  same  principle  in 
a  different  form,  or  to  grasp  the  gist  or  principle 
of  the  invention  and  state  that  without  unnecessary 
limitation.  To  meet  such  situations  as  this,  the 
courts  early  adopted  the  principle  that  an  inventor 
is  entitled  not  only  to  what  he  claims,  but  to  every 
equivalent  of  what  he  claims,  and  the  courts  defined 
"an  equivalent"  to  be  that  which  performs  the 
same  function  in  substantially  the  same  way.  This 
definition  is  necessarily  indefinite,  and  its  indefi- 
niteness  is  made  very  useful  by  the  courts,  as  will 
appear.  In  the  case  of  a  pioneer  inventor — that  is, 
the  first  to  invent  a  machine  for  a  given  purpose, 
such  as  the  supposed  inventor  of  the  shaper — the 
courts  will  construe  almost  anything  that  performs 
the  same  function  to  be  an  equivalent.  In  the 
present  case,  the  courts  would  hold  that,  although 
the  claim  did  state  that  the  tool  slide  was  moved 
laterally  to  produce  the  feed,  it  is  the  mechanical 


58  PATENTS   IN   MANUFACTURING 

equivalent  of  that  construction  to  move  the  work 
table  laterally  for  the  same  purpose,  because, 
after  the  inventor  had  shown  how  to  make  a  shaper 
having  the  feed  movement  applied  to  the  tool  guide- 
way,  it  was  comparatively  easy  merely  to  reverse 
the  matter  and  apply  the  feed  motion  to  the  work 
table.  And  so  the  courts  would  enjoin  the  manufac- 
ture, use,  or  sale  of  the  machine  in  question. 

AVOIDING  INFRINGEMENT  BY  LIMITING  THE  CLAIM 
BY  THE  PRIOR  ART. 

But,  in  the  last  instance,  suppose  that  the  shaper 
patentee  did  not  invent  the  first  of  all  shapers,  but 
was  simply  the  first  to  invent  a  shaper  in  which  the 
feed  motion  was  given  to  the  tool  slide,  instead  of  to 
the  work  table.  In  this  case,  if  the  defendant 
proved  that  it  was  old,  before  the  invention  of  the 
patentee,  to  use  a  shaper  having  the  feed  motion 
applied  to  the  work  table,  instead  of  to  the  tool 
slide,  the  courts  would  say  to  the  patentee :  "  Your 
claim  cannot  be  held  to  include  the  machine  you 
complain  of,  because,  if  it  includes  that  machine, 
it  will  also  include  the  machine  which  was  made  and 
used  before  your  invention,  and  your  claim  will 
therefore  be  invalid."  The  court  would  therefore 
dismiss  the  bill  of  complaint  and  allow  the  manufac- 
ture, use,  and  sale  of  the  machine  complained  of  to 
continue. 


OF   INFRINGEMENTS  59 

INFRINGEMENT  BY  IMPROVEMENTS. 

Suppose,  now,  that  the  patentee  having  the  claim 
last  recited  brought  suit  against  a  manufacturer 
whose  shaper  had  the  feed  motion  applied  to  the 
tool  slide,  but  there  was  this  difference  between 

^^>___~— — — - 

the  machine  of  the  patent  and  the  machine  com- 
plained of,  namely;  that  in  the  machine  of  the 
patent  the  feed  motion  is  applied  to  the  tool  slide 
by  a  hand-operated  screw,  whereas  in  the  machine 
complained  of,  the  feed  motion  was  applied  by  an 
automatically  turned  screw.  In  this  case,  the 
defendant  would  probably  say:  "My  machine  is 
different  from  the  complainant's  machine,  because 
I  have  an  automatic-feed  motion,  while  he  has  only 
a  hand-feed  motion  7 '  The  answer  to  the  defendant 
is,  that  he  has  used  the  principle  of  the  patented 
invention,  even  though  he  has  improved  it,  and  so 
long  as  he  uses  that  principle  he  is  an  inf ringer.  He 
cannot  take  what  the  patentee  has  invented  and 
build  upon  that  as  a  foundation,  even  though  he 
go  much  further  than  the  patentee  went,  for  he  is 
using  that  which  is  the  patentee's  property. 

AVOIDING  INFRINGEMENT  BY  OMITTING  AN  ELE- 
MENT OF  THE  CLAIM. 

Again,  suppose  the  machine  in  the  patent  had 
a  rotatable  work  holder  on  the  table  and  means 


60  PATENTS   IN   MANUFACTURING 

for  rotating  the  work  holder,  and  suppose  the  claim 
in  the  patent  were  as  follows : 

In  a  shaper,  the  combination  of  a  frame,  a  table 
supported  on  the  said  frame,  and  a  rotatable  work 
holder  supported  on  the  said  table,  means  for  rotating 
said  work  holder,  a  tool-carrying  ram,  and  means  for 
reciprocating  said  ram. 

Suppose  the  machine  complained  of  had  every 
part  exactly  like  the  machine  in  the  patent,  except 
that  there  were  no  rotatable  work  holder,  and  of 
course  no  means  for  rotating  it.  Suppose,  also,  that 
there  wras  no  prior  art  of  any  sort,  so  that  the  pat- 
entee was  entitled  to  the  broadest  possible  interpre- 
tation of  his  claim.  Still,  the  courts  would  not 
hold  the  claim  to  have  been  infringed,  because  the 
patentee  had  chosen  to  make  a  rotating  work 
holder,  and  the  means  for  rotating  it,  elements  of  the 
claim;  and  the  machine  complained  of  does  not 
have  these  elements,  nor  any  equivalents  of  them. 
In  other  words,  if  a  claim  includes  the  elements  A, 
B,  C,  and  D,  and  a  competitor  can  make  a  machine 
which  will  accomplish  the  same  purpose  with  only 
the  elements  A,  B,  and  C,  and  without  the  element 
D,  or  any  equivalent  thereof,  the  competitor's 
machine  cannot  be  enjoined  under  the  claim.  The 
courts  will  go  a  great  way  to  sustain  a  patent  and 
make  it  effective,  but  when  a  patentee  has  said  in 
his  claim  that  his  invention  consists  of  a  given  num- 


OF   INFRINGEMENTS  61 

her  of  elements,  he  will  not  be  allowed  to  say  it 
consists  of  a  less  number.  The  courts  will  read 
an  element  into  a  claim,  by  implication,  to  make  it 
complete  and  its  structure  operative — that  is,  to 
include  enough  elements  to  produce  the  mechanical 
or  physical  effect  stated  but  they  will  never  read  an 
element  out  of  a  claim. 

Every  patentee  is  entitled  to  some  range  of  equi- 
valents in  the  interpretation  of  his  claim,  the  extent 
to  which  he  is  entitled  to  equivalents  depending 
upon  whether  his  invention  was  a  long  or  short 
step  in  the  art.  If  he  was  the  first  to  produce  a 
machine  for  a  given  purpose,  almost  any  machine 
for  the  same  purpose  will  be  held  to  be  an  infringe- 
ment. If,  however,  his  invention  consists  in  some 
slight  change  or  improvement  in  a  previously  exist- 
ing machine,  it  is  only  machines  that  are  very 
slightly  different  from  his  machine  that  will  be  held 
to  be  infringements.  It  is  by  thus  giving  the  term 
"  equivalent"  a  greater  or  less  breadth,  that  the 
courts  give  a  patent  greater  or  less  scope  commen- 
surate with  the  breadth  of  the  invention. 

Changes  of  form  or  proportion  will  not  avoid  a 
charge  of  infringement,  unless  the  invention  lies  in 
the  particular  form  or  proportion  which  is  departed 
from.  If  the  device  of  the  changed  form  or  pro- 
portion does  not  differ  in  principle  or  mode  of 
operation  from  the  patented  device,  it  will  not 
escape  the  charge  of  infringement. 


62  PATENTS   IN   MANUFACTURING 

The  principles  stated  with  reference  to  machines 
apply  with  equal  force  to  the  three  other  classes  of 
inventions  which  can  be  protected;  namely,  arts 
or  processes,  manufactures,  and  compositions  of 
matter. 

PROCESS  CLAIM  INFRINGED,  ALTHOUGH  A  DIFFER- 
ENT APPARATUS  WAS  USED  TO  PRACTICE 
PROCESS. 

A  process  is  infringed  whenever  the  steps  of  that 
process  are  followed,  whether  or  not  the  same  appa- 
ratus is  used  in  practicing  the  process.  There  was 
a  process  for  manufacturing  fatty  acids  and  glycerin 
from  fatty  bodies,  in  which  the  fatty  body  was  mixed 
with  water  in  the  proportion  of  two  or  three  parts 
of  fat  to  one  of  water,  and  the  mixture  was  heated 
to  about  612  degrees  F.,  and  was  subjected  to  a 
pressure  sufficient  to  prevent  the  heat  from  con- 
verting water  into  steam.  The  claim  was  : 

The  manufacturing  of  fatty  acids  and  glycerine 
from  fatty  bodies  by  the  action  of  water  at  a  high 
temperature  and  pressure. 

The  heat  was  applied  to  the  outside  of  the  vessel. 
The  inf ringer  only  used  about  310  degrees  F.,  and 
he  added  a  percentage  of  lime  to  the  water  with  the 
fat ;  he  reduced  the  pressure  to  correspond  with  the 
temperature,  and  he  obtained  the  temperature  by 
means  of  superheated  steam  introduced  into  the 


UNIVERSITY 

OF 


OF   INFRINGEMENTS  63 

vessel,  instead  of  heat  applied  outside  the  vessel. 
Notwithstanding  all  these  differences  in  the  appara- 
tus and  procedure,  the  Supreme  Court  of  the  United 
States  found  infringement. 

REPAIR  AND  RECONSTRUCTION  OF  PATENTED 
DEVICES. 

A  patented  device  which  is  worn  out  cannot  be 
repaired,  even  if  its  separate  parts  are  not  patented, 
and  cannot  be  repaired  or  its  parts  replaced,  if  in 
doing  this  the  identity  of  the  machine  is  destroyed. 
The  patentee  cannot  be  deprived  of  the  profit  which 
he  should  justly  have  on  a  new  machine  by  con- 
structing a  new  machine  under  the  guise  of  repair 
or  replacement.  And  if  the  gist  of  the  patented 
invention  lies  in  a  single  part,  when  that  part  has 
worn  out  it  cannot  be  replaced  without  infringe- 
ment. 

CONTRIBUTORY  INFRINGEMENT. 

Where  the  claim  of  a  patent  covers  a  combina- 
tion of  several  elements,  it  is  an  old  trick  for  two 
or  more  parties  to  arrange  so  that  each  of  them 
shall  supply  part  of  the  combination  and  the  pur- 
chaser shall  put  them  together  and  thus  make  the 
patented  thing.  The  purchaser  may  thus  construct 
only  one  of  the  patented  devices,  and  it  may  there- 
for not  be  worth  while  to  sue  him;  but  the  courts 
have  held  that  where  a  part  of  a  patented  combina- 


64  PATENTS    IN    MANUFACTURING 

tion  is  made  with  the  purpose  that  it  shall  be  used 
with  other  parts  to  make  up  the  patented  combina- 
tion, the  maker  of  the  first  mentioned  part  is  a  con- 
tributory inf ringer  and  can  be  enjoined.  In  this 
way  the  manufacturer  can  be  enjoined  instead  of 
the  consumer,  and  the  real  source  of  the  trouble 
reached.  For  instance,  there  was  a  patent  granted 
upon  the  combination  of  a  certain  burner  and  lamp 
chimney.  A  manufacturer  sold  the  burner  without 
the  chimney,  with  the  intention  and  recommenda- 
tion that  the  consumer  should  use  it  to  complete  the 
patented  combination,  and  the  consumer  bought 
the  chimney  where  he  could.  The  burner  alone 
was  not  patented,  but  the  claim  was  for  the  com- 
bination both  of  the  burner  and  the  chimney. 
The  manufacturer  of  the  burner  pleaded  that  he 
was  not  making  the  combination  claimed.  The 
court,  however,  held  that  as  he  made  a  part  of  the 
combination  with  the  intention  that  it  should  be 
used  with  the  rest  of  the  combination,  he  was  an 
infringer  and  should  be  enjoined. 

MANUFACTURE  IN  THIS  COUNTRY  FOR  SALE  ABROAD 
AND  IMPORTATION  OF  PATENTED  DEVICES. 

As  a  patent  gives  the  patentee  the  exclusive  right 
to  make,  use,  and  sell  the  patented  invention,  and  as 
each  of  these  rights  is  a  separate  monopoly,  it  is 
infringement  to  make  the  patented  article  in  the 


OF   INFRINGEMENTS  65 

United  States,  even  though  it  be  for  sale  in  a  foreign 
country.  Likewise,  it  is  infringement  to  import 
into  the  United  States  devices  which  are  covered 
by  United  States  patents,  even  though  those  devices 
are  made  abroad.  The  American  patentee  of  a 
watch  is  entitled  to  prevent  a  Swiss  watch-maker 
from  making  his  watch  in  Switzerland  and  import- 
ing it  into  this  country. 

INJUNCTIONS  AND  DAMAGES. 

There  are  three  remedies  for  the  infringement  of 
a  patent.  An  injunction  can  be  obtained  restrain- 
ing the  further  manufacture,  use,  or  sale  of  the 
patented  invention.  This  elimination  of  com- 
petition is  the  chief  benefit  of  a  patent.  \  Besides 
the  injunction,  the  damages  which  the  patentee 
has  suffered  through  lost  sales  or  other  pecuniary 
injury  can  be  recovered,  if  they  can  be  proven. 
Instead  of  thedamages  which  are  suffered  because 
of  the  infringement,  the  patentee  may  recover  the 
profits  which  the  infringer  has  made  out  of  the  un- 
lawful manufacture,  use,  or  sale  of  the  patented 
invention.  In  this  case,  also,  the  amount  must  be 
proven  by  the  patentee.  It  is  because  of  the  diffi- 
culty of  proving  profits  or  damages  that  I  stated 
that  the  chief  value  of  the  patent  is  the  injunctions 
which  it  may  afford  against  competition.  For  the 
purpose  of  ascertaining  the  amount  of  the  infringer's 


66  PATENTS   IN   MANUFACTURING 

profits,  the  courts  will  compel  him  to  render  an 
account.  The  courts  will  grant  a  patentee  both 
damages  and  profits  from  the  infringer. 

Under  certain  circumstances,  the  courts  will  grant 
a  preliminary  injunction  at  the  outset  of  a  suit 
for  infringement,  restraining  the  alleged  infringer 
during  the  continuance  of  the  suit  and  until  the 
matter  is  finally  determined.  This  will  be  done, 
for  instance,  where  the  patent  has  already  been 
adjudicated  and  the  new  defendant  does  not  set  up 
any  substantially  different  defense  from  those 
considered  in  the  previous  suits.  It  will  also  be 
done  where  the  public  has  generally  acquiesced  in 
the  validity  of  the  patent. 

MARKING  PATENTED  AND  UNPATENTED  ARTICLES 
WITH  NOTICE  OF  THE  PATENT. 

If  a  patentee  wishes  to  recover  damages  from  an 
infringer,  he  must  always  show  that  he  has  always 
marked  the  patented  article  with  the  word  "  Pat- 
ented" and  the  number  or  date  of  the  patent,  or 
that  the  infringer  had  actual  notice  of  the  existence 
of  the  patent.  It  is  therefore  customary  to  mark 
articles  made  under  a  patent  with  a  notice  of  the 
patent.  There  is  a  penalty  for  falsely  marking 
unpatented  articles  "  Patented"  or  for  intentionally 
marking  a  patented  article  with  the  wrong  patent 
number. 


OF   INFRINGEMENTS  67 

One  very  large  company  manufacturing  shoe 
machinery  does  not  put  any  patent  numbers  on  its 
machines.  The  reason  is  that  it  does  not  want  in- 
tending competitors  to  be  able  to  select  out  from  its 
hundreds  of  patents  the  particular  patents  to  be 
avoided  in  making  a  competing  machine,  nor  to  be 
able  to  foretell  on  just  what  patents  a  suit  for 
infringement  would  be  brought. 

DESIGN  PATENTS. 

A  mechanical  patent  covers  the  mechanical 
principle  of  the  invention,  and  may  cover  it  without 
any  reference  to  the  appearance.  That  is,  two 
machines  looking  wholly  unlike,  but  operating 
upon  the  same  principle,  may  infringe  the  same 
mechanical  patent.  The  law,  however,  provides 
for  the  protection  of  the  appearance  of  an  article, 
if  it  is  of  sufficient  artistic  merit  so  that  it  can  be 
said  to  have  required  invention  to  produce  it. 
Thus,  the  appearance  of  a  stove  may  be  protected 
by  a  design  patent,  and  any  stove  made  according 
to  that  design  would  be  an  infringement,  no  matter 
what  the  interior  arrangement  of  chambers,  pas- 
sages, shelves,  etc.,  might  be.  In  fact,  the  appear- 
ance of  the  exterior  of  the  stove  might  be  the  subject 
of  a  design  patent,  and  the  mechanical  structure 
of  the  interior  the  subject  of  a  mechanical  patent, 
and  a  competitor  might  infringe  the  design  patent 


68  PATENTS   IN   MANUFACTURING 

and  not  infringe  the  mechanical  patent,  and  vice 
versa. 

Stated  in  homely  language,  the  test  of  infringe- 
ment of  a  design  patent  is  whether  or  not  the  com- 
peting article  is  so  similar  in  appearance  to  the 
patented  article  as  to  deceive  the  ordinary  pur- 
chaser familiar  with  that  class  of  goods,  so  that  he 
might  buy  the  competitor's  article  under  the  suppo- 
position  that  he  was  buying  the  patented  article. 


CHAPTER  V. 
PATENTING  A  NEW  PRODUCT. 


are  three  forms  of  direct  patent  pro- 
JL  tection  which  it  is  possible  to  use  to  obtain 
a  monopoly  of  a  product  and  one  form  of  indirect 
protection.  The  first  and  best  protection  would 
be  that  of  a  patent  on  the  product  itself.  In  order 
to  obtain  a  patent  on  the  product  the  product 
must  be  new.  If  the  product  is  one  which  is 
covered  by  a  patent,  but  for  which  the  patent 
is  about  to  expire,  it  would  not  be  sufficient 
merely  to  make  a  slight  improvement,  because 
the  patent  would  cover  only  the  improvement. 
The  form  of  the  product  covered  by  the  original 
patent  would  be  public  property  and  anyone  could 
make  or  use  or  sell  it.  It  is  quite  often  supposed 
that  by  getting  a  new  patent,  not  only  is  the 
improvement  covered,  but  the  elements  of  the 
product  which  were  the  subject  of  the  first  patent 
are  also  protected.  I  have  shown  in  the  fourth 
chapter,  under  the  heading  "Avoiding  Infringe- 
ment by  Omitting  an  Element  of  the  Claim," 
that  to  omit  an  element  of  a  claim  without  sub- 
stituting any  equivalent  is  to  avoid  the  claim. 


70  PATENTS   IN   MANUFACTURING 

Thus,  if  the  improved  product  had  five  elements, 

A,  B,  C,  D,  and  E,  and  the  product  as  covered 
by  the  original  patent  had  only  four  of  these 
elements,  A,  B,  C,  and  D,  the  patent  on  the  improve- 
ment would  cover  the  use  of  only  the  elements,  A, 

B,  C,  and  D,  without  the  element  E;  and,  more- 
over, the  second  patent,  if  it  had  the  effect  of  cover- 
ing the  product  of  the  first  patent,  would  be  void 
because  it  covered  what  must  become  public  prop- 
erty at  the  expiration  of  the  first  patent. 

For  instance,  in  the  first  planer,  the  return  of 
the  table  was  no  quicker  than  the  cutting  travel . 
Suppose  the  patent  on  this  planer  were  about  to 
expire,  and  in  an  attempt  to  extend  the  monopoly, 
the  inventor  had  invented  the  quick  return.  The 
second  patent  would  protect  the  quick  return,  but 
anyone  else  could  make  the  planer  without  the 
quick  return,  for  that  was  the  subject  of  the  first 
patent,  and  on  the  expiration  of  that  patent,  what 
is  disclosed  became  public  property.  If,  however, 
the  quick-return  planer  could  displace  the  old  planer, 
because  of  its  greater  efficiency,  the  monopoly 
would  practically  be  extended. 

If  the  product  could  be  so  greatly  improved  as 
completely  or  largely  to  supplant  the  old  form, 
then  a  patent  on  the  improved  product  would  prac- 
tically extend  the  monopoly. 

While  it  may  seem  impossible  to  improve  a  pro- 


PATENTING    NEW    PRODUCT  71 

duct  so  as  to  secure  a  new  patent,  this  is  frequently 
being  done.  In  a  paper  on  "  The  Art  of  Inventing/' 
published  in  the  proceedings  of  the  American 
Institute  of  Electrical  Engineers  for  July,  1906,  and 
reviewed  in  the  issue  of  THE  ENGINEERING  MAGA- 
ZINE for  September,  1906, 1  have  endeavored  to  ana- 
lyze the  procedure  in  making  such  a  new  invention. 
An  exceedingly  interesting  instance  of  an  attempt 
to  prolong  the  monopoly  after  the  expiration  of  the 
original  patent,  is  the  case  of  the  telephone.  The 
main  Bell-telephone  patent  was  issued  in  1876  and 
expired  in  1893.  In  1877  an  application  for  patent 
was  filed  by  Berliner,  and  this  application  was  kept 
alive  in  the  Patent  Office  until  1891,  when  the 
patent  was  issued.  The  best  form,  and  practically 
the  only  commercial  form,  of  telephone  transmitter 
is  the  loose  carbon  or  microphone  transmitter,  and 
the  Bell  Company  contended  that  this  Berliner 
patent  covered  this  transmitter.  In  1903,  the 
patent  was  held  by  the  court  to  cover  only  a  trans- 
mitter having  metallic  contacts,  and  not  to  cover 
the  microphone  transmitter;  but  if  the  company's 
contention  had  been  sustained,  the  monopoly 
would  have  extended  from  1876  to  1908. 
|V  The  second  way  in  which  the  product  can  be 
protected  is  to  patent  a  process  of  making  that 
product,  by  which  the  product  can  be  made  either 
of  a  quality  which  is  superior  to  any  similar  product 


72  PATENTS   IN   MANUFACTURING 

on  the  market,  or  by  which  it  can  be  made  cheaper 
than  any  other  product  of  the  same  quality. 

The  method  of  casting  car-wheels  described  on 
the  first  page  of  the  second  chapter  is  an  instance. 
The  commercial  process  of  making  calcium  carbide 
is  another  instance.  In  this  case  both  the  only 
commercial  process  for  making  calcium  carbide 
and  the  only  commercial  form  of  calcium  carbide 
are  the  subject  of  patents  owned  by  the  same  con- 
cern, so  that  there  is  a  double  protection.  The 
Harvey  process  of  making  armor  plate  was,  until 
a  better  process  was  discovered,  another  instance. 

Every  product  is  made  by  some  process;  that 
is,  as  stated  in  the  second  chapter,  by  a  series  of 
steps  or  operations  for  accomplishing  a  physical 
or  chemical  result.  In  most  cases  the  process  is 
old  and  is  therefore  unpatentable,  and  this  is  what 
the  courts  mean  when  they  say  that  the  mere  func- 
tion of  a  machine  is  unpatentable ;  but  if  the  series 
of  steps  or  operations  performed  by  the  machine 
is  radically  different  from  any  series  of  steps  ever 
performed  for  the  same  purpose,  it  may  be  patent- 
able. 

If  the  process  covers  the  only  possible  way  of 
making  the  product,  the  process  is  as  good  protec- 
tion as  the  patent  on  the  product  itself.  The  Bes- 
semer process  of  making  steel  afforded  a  practical 
monopoly  of  the  kinds  of  steel  that  were  adapted 


PATENTING    NEW   PRODUCT  73 

to  be  made  by  that  process.  The  process  was  so 
cheap  that  for  the  same  kinds  and  qualities  of  steel, 
no  other  process  could  compete. 

The  patent  on  the  product  covers  the  product, 
whatever  may  be  the  process  or  machine  used  in 
manufacturing.  The  patent  on  the  process  covers 
the  process,  whatever  may  be  the  apparatus  used 
in  practising  the  process.  It  is  of  course  desirable 
to  patent  both  the  product  and  the  process,  if 
possible.  In  the  case  of  the  phonograph,  both  the 
machine  and  the  method  by  which  it  reproduces 
sound  were  the  subject  of  patents,  affording  a 
double  protection. 

In  an  efforo  to  control  a  certain  product  as  long  as 
possible,  the  product  itself  was  first  patented. 
Then,  in  order  to  provide  against  the  contingency  of 
the  patent  on  the  product  being  declared  invalid, 
and  also  to  extend  the  monopoly  beyond  the  term 
of  that  patent,  it  was  decided  to  obtain,  if  possible, 
patents  covering  all  feasible  processes  of  making  the 
product.  There  were  two  steps  or  operations  which 
were  essential  to  the  production  of  the  product, 
and  upon  consideration  it  was  seen  that  there  were 
but  three  orders  in  which  those  steps  could  be  per- 
formed ;  first,  in  the  order  A-B,  and  then  in  the 
reverse  order  B-A,  and  then  both  steps  together. 
Order  A-B  was  the  old  order,  but  it  did  not  pro- 
duce an  article  having  the  desired  qualities.  The 


74  PATENTS   IN   MANUFACTURING 

inventor  had  already  invented  the  order  B-A,  but 
he  proceeded  to  invent  a  way  by  which  both  steps 
could  be  performed  together,  and  the  patenting 
of  the  two  processes  consisting  of  the  order  B-A 
and  then  the  two  steps  together  would  cover  generic- 
ally  all  possible  ways  of  making  the  article,  and  by 
arranging  to  have  the  patents  on  the  processes  not 
issued  until  after  the  patent  on  the  article  had  been 
issued,  he  would  extend  his  monopoly  so  long  as  the 
patents  on  the  two  processes  were  in  force,  because 
no  one  could  make  the  article  without  using  one  of 
the  two  processes.  Others  might  invent  ways  that 
were  better  in  detail  than  those  invented  by  the 
inventor  in  question,  but  as  whatever  way  was  in- 
vented would  be  certain  either  to  use  the  steps  in 
the  order  B-A  or  to  use  both  steps  together,  such 
new  ways  would  be  certain  to  embody  the  broad 
principle  covered  by  one  or  the  other  patent  and 
could  thus  be  enjoined.  The  blank  out  of  which  the 
article  was  to  be  manufactured  was  also  patented 
and,  finally,  machinery  which  was  necessary  to 
carry  out  the  processes  was  patented.  It  is  hardly 
within  the  range  of  possibility  that  enough  of  the 
patents  can  be  upset  to  make  the  article,  the  blank, 
the  necessary  procedure  in  making  the  article  from 
the  blank,  and  the  machinery  for  practising  the 
processes,  all  public  property.  Moreover,  the  pro- 
cess patents  were  delayed  in  the  Patent  Office  by  an 


PATENTING    NEW    PRODUCT  75 

interference  contest  with  other  claimants  for  the 
same  inventions,  so  that  their  terms  did  not  begin 
to  run  until  after  the  patent  for  the  article  had  been 
running  some  years.  The  process  patents  thus 
in  effect  extended  the  monopoly  granted  by  the 
patent  on  the  article  a  number  of  years  beyond  the 
seventeen  years  of  the  article  patent. 

A  third  way  of  protecting  the  new  product  is  to 
patent  a  blank  out  of  which  the  article  must  neces- 
sarily be  made  (as  can  be  done  in  certain  instances) 
or  to  patent  a  blank  out  of  which  the  article  can  be 
made  more  advantageously  than  from  any  other 
blank. 

The  fourth  way  of  protecting  the  product  would 
be  to  invent  a  machine  which  would  make  a  product 
of  better  quality  or  of  less  cost  than  those  already 
on  the  market.  Paraffined  paper  was  practically 
monopolized  by  the  invention  of  the  first  successful 
machine  for  paraffin  paper. 

The  fifth  way  to  protect  the  product  would  be  to 
tie  it  up  with  some  other  patent.  For  instance, 
there  was  the  button  fastener  for  fastening  buttons 
upon  shoes,  mentioned  in  the  third  chapter  and 
on  which  there  was  no  patent.  These  fasteners  were 
driven  by  hand  tools.  A  machine  was  invented 
for  driving  these  fasteners  by  the  mere  move- 
ment of  a  treadle,  the  machine  being  so  simple  that 
it  could  be  sold  to  shoe-dealers  throughout  the 


76  PATENTS   IN   MANUFACTURING 

country  as  well  as  to  shoe  manufacturers.  The 
button-setting  machine  was  sold  only  under  licenses 
which  permitted  its  use  only  with  button  fasteners 
purchased  of  the  manufacturers  of  the  machine. 
These  licenses  were  valid  and  enforceable,  and  the 
machines  practically  drove  the  hand-setting  tools 
out  of  the  market.  Thus  the  patent  on  the  machine 
practically  gave  a  monopoly  of  the  button  fastener 
itself,  and  the  manufacturers  of  the  machines  were 
as  well  off  as  if  they  had  a  patent  on  the  button 
fastener. 

Another  example  of  the  protection  of  an  unpatent- 
able  product  by  tying  it  up  to  a  patent  on  some- 
thing else  is  that  of  the  shoe-making  machines 
referred  to  in  the  third  chapter  (under  the  section 
"Restrictions  as  to  Uses"),  which  were  unpatented 
but  were  protected  by  a  license  on  a  shoe-sewing 
machine,  the  shoe-sewing  machine  being  almost 
absolutely  necessary  to  the  shoe  manufacturer 
and  the  shoe  manufacturer  being  forbidden  to  use 
the  shoe-sewing  machine  with  any  other  shoe-mak- 
ing machines  for  certain  specified  operations,  unless 
those  other  machines  were  made  by  the  manufac- 
turers of  the  patented  machines. 

Of  course,  if  the  product  be  new  or  be  improved, 
the  manufacturer  will  have  an  investigation  made 
to  see  whether  a  patent  can  be  obtained  on  the 
product,  and  similarly  with  the  process  for  making 
it  and  the  machine  for  making  it. 


PATENTING    NEW   PRODUCT  77 

It  is  desirable,  for  several  reasons,  to  patent  the 
new  product,  or  process  or  machine  for  making  it. 
The  patent  not  only  keeps  down  competition,  but 
it  prevents  anyone  else  from  obtaining  a  patent  on 
the  same  thing.  It  is  much  cheaper  to  patent  the 
device  oneself  than  to  defend  a  suit  for  infringe- 
ment brought  by  someone  else  who  has  patented 
the  invention  afterwards,  because,  even  though  the 
patent  in  the  latter  case  would  be  invalid,  it  is 
expensive  to  prove  that  in  an  infringement  suit, 
whereas  the  cost  of  obtaining  a  patent  oneself 
would  be  comparatively  slight.  If  the  first  manu- 
facturer patented  the  device,  the  Patent  Office 
would  reject  an  application  for  patent  by  the  sec- 
ond manufacturer,  in  view  of  the  patent  granted  to 
the  first  manufacturer.  I  have  known  of  an  instance 
where  a  company  made  an  invention  and  put  it  to 
work  in  its  own  works,  and  someone  else  saw  it  in 
their  works  and  patented  the  invention,  and  then 
sued  the  company  which  originated  it.  The  history 
of  inventions  shows  that  it  is  generally  impossible  to 
keep  them  secret.  It  does  not  do  to  rely  upon  the 
faithfulness  of  employees  to  prevent  the  knowledge 
of  the  invention  leaking  out. 

If  a  rival  wants  badly  enough  to  know  how  any- 
thing is  done,  and  is  willing  to  spend  sufficient 
money,  he  can  usually  get  what  he  wants. 

When  a  commercially  undesirable  form  of  pro- 


78  PATENTS   IN   MANUFACTURING 

duct  is  invented,  it  should  be  considered  whether  the 
principle  of  the  form  is  absolutely  bad,  or  whether 
it  is  possible  that  principle  could  be  embodied 
in  some  different  form  that  might  be  desirable. 
If  there  is  any  probability  that  the  principle  could 
be  made  use  of  by  some  competitor  who  might 
invent  a  more  commercial  application  of  that 
principle,  then  it  is  desirable  to  patent  the  commer- 
cially undesirable  form  embodying  the  principle, 
because  the  broad  claims  on  the  principle  would  be 
as  valid  in  a  patent  showing  the  undesirable  form 
as  in  a  patent  showing  a  more  desirable  form. 

But  whether  or  not  it  is  found  that  the  product 
or  process  or  machine  is  patentable,  it  is  also  neces- 
sary to  make  a  further  investigation  of  the  patents 
already  granted  to  see  whether  there  is  any  exist- 
ing patent  with  a  valid  claim  that  can  be  used  to 
stop  the  manufacture,  use,  or  sale  of  the  product 
or  process  or  machine.  This  is  a  point  that  seems 
to  give  a  good  deal  of  difficulty,  not  only  to  the 
manufacturer,  but  to  many  lawyers  who  do  not 
make  a  specialty  of  patents,  and  even  to  the  courts. 
It  is  reasoned  that  if  the  Patent  Office  recognizes 
the  new  product  or  process  or  machine  as  being  so 
different  from  all  previous  devices  or  processes  of 
the  same  kind  as  to  grant  a  patent  upon  it,  then 
it  cannot  be  an  infringement  of  anyone's  else  patent. 
The  Supreme  Court  of  the  United  States,  however, 


PATENTING    NEW   PRODUCT  79 

has  expressly  decided  that  even  though  the  new 
device  or  process  may  be  better  than  all  others  and 
may  be  patentable,  it  may  still  be  an  infringement 
of  a  previous  patent.  When  Bell  obtained  his 
patents  on  the  telephone,  a  host  of  inventors  imme- 
diately went  to  work  to  improve  the  telephone, 
and  Edison,  Blake,  and  Berliner  (as  before  stated 
herein)  and  others  produced  telephones  that  were 
better  than  Bell's  telephones;  and  yet  they  could 
not  use  their  improved  telephones  during  the  seven- 
teen years  that  the  Bell  patents  were  in  force,  with- 
out the  consent  of  Bell,  or  his  assignees,  because 
their  telephones,  although  better  than  Bell's, 
embodied  the  principles  of  Bell's  invention,  and 
Bell  was  entitled  to  an  absolute  monopoly  of  those 
principles,  whether  used  in  a  better  telephone  than 
his  or  not.  The  matter  may  perhaps  be  made 
clearer  by  a  number  of  comparisons.  Suppose  the 
first  inventor  of  cast  iron  had  obtained  a  patent 
upon  the  combination  of  iron  and  carbon;  he  would 
not  only  be  able  to  prevent  the  use  of  this  combina- 
tion for  making  cast  iron,  but  also  for  making  steel 
in  all  its  varieties  and  every  form  of  product  in 
which  iron  and  carbon  were  combined  together. 
Suppose  that  the  prior  patent  is  infringed  and  no 
way  is  seen  to  avoid  infringement  by  changing  the 
product  or  the  process  or  the  machine  so  as  not  to 
embody  the  principle  of  a  patented  invention. 


80  PATENTS   IN   MANUFACTURING 

The  simplest  way,  of  course,  would  be  to  buy  the 
patent.  If  the  patent  cannot  be  bought,  but  a 
fraction  of  the  patent  can  be  obtained,  no  matter 
how  small  a  fraction — say  one-tenth  of  the  entire 
right  in  the  patent — the  owner  of  the  one-tenth 
would  be  just  as  well  off  as  the  owner  of  the  nine- 
tenths.  The  courts  have  held  that  a  patent  is  not 
like  the  capital  stock  of  a  corporation,  and  that  the 
owner  of  more  than  one-half  of  the  title  to  the 
patent  has  no  claim  upon  the  owner  of  less  than  one- 
half.  Each  one  is  at  liberty  to  do  with  his  portion 
what  he  pleases,  and  cannot,  in  the  absence  of  an 
agreement  to  that  effect,  be  made  to  account  to  the 
other.  The  owner  of  one-tenth  may  make  ten 
times  as  much  out  of  the  patent  as  the  owner  of 
nine-tenths,  because  of  his  greater  business  ability 
or  greater  capital,  or  for  other  similar  reasons,  and 
it  would  not  be  equitable  to  make  him  turn  over 
nine-tenths  of  his  profits  to  the  other  owner. 

Competitors  have  been  enjoined  from  making  a 
product  where  the  competitor  sold  a  patent  which 
he  knew  to  be  invalid,  the  competitor  intending  to 
get  the  purchase  money  for  the  patent  and  also  to 
continue  manufacturing  the  product  because  he 
knew  the  patent  was  invalid;  but  the  courts  will 
not  permit  a  man  to  sell  a  patent  and  then  to  say 
that  what  he  sold  was  worthless,  so  that  although  the 
patent  may  be  invalid  as  against  all  the  rest  of  the 


PATENTING    NEW   PRODUCT  81 

world,  it  is  valid  as  against  the  man  who  sold  it, 
and  the  man  who  purchased  the  patent  would  be 
able  to  keep  the  seller  out  of  the  market  for  the  bal- 
ance of  the  life  of  the  patent. 

It  is  not  sufficient  that  the  new  product  be  illus- 
trated and  described  in  a  prior  patent;  if  it  is  not 
covered  by  the  claim  of  the  patent,  then  the  patent 
cannot  be  used  to  enjoin  the  product.  Often  the 
drawing  of  a  patent  will  illustrate  a  big  machine, 
but  the  claims  will  be  found  to  cover  only  a  small 
portion  or  detail  of  the  machine,  and  it  is  only  this 
portion  that  is  described  by  the  claim  that  is  pro- 
tected by  the  patent. 

If  a  prior  patent  is  found  that  has  a  claim  cover- 
ing the  new  product,  but  if  it  can  be  shown  that 
before  the  invention  of  the  prior  patentee  any  of  the 
defenses  existed  which  are  enumerated  in  the  second 
chapter,  in  the  section  "The  Nature  of  a  Patent," 
then  the  patent  can  be  disregarded,  as  no  suit  under 
the  patent  could  be  successful.  There  are  other 
defenses  too  many  to  enumerate  herein.  If  the 
prior  patent  has  a  claim  which  covers  the  new 
product  or  process  or  machine,  and  it  can  be  shown 
that  before  the  patentee's  invention  there  existed, 
in  a  manner  accessible  to  the  public,  a  structure  or 
process  sufficiently  like  the  product  or  process  or 
machine  which  it  is  desired  to  put  out,  so  that  if 
the  claim  be  given  a  broad  enough  scope  to  include 


82  PATENTS   IN   MANUFACTURING 

the  new  process  or  product  or  machine,  it  will  also 
include  the  old  structure  or  process — then  the  court 
may  say  that  the  claim  is  valid  for  the  detail  or 
difference  which  the  patentee  has  over  the  old  struc- 
ture or  process,  but  that  it  would  be  invalid  if  con- 
strued broadly  enough  to  include  the  new  product  or 
process.  In  this  way  the  claim  may  be  limited  by 
the  prior  art  sufficiently  to  let  the  new  process  or 
product  out  from  the  charge  of  infringement,  and 
yet  the  claim  may  be  sustained  as  valid.  The  rea- 
soning would  be  that  if  the  patentee  had  not  claimed 
the  detail  his  patent  would  be  invalid.  Therefore 
the  patent  would  not  be  infringed,  unless  that  detail 
were  used. 

The  law  does  not  require  that  a  new  product, 
process,  or  machine  be  patented  before  it  is  put  on 
the  market,  but  it  allows  two  years  of  public  use 
or  sale  of  the  invention  in  order  that  the  inventor 
may  thoroughly  test  his  article  and  be  sure  that  it  is 
satisfactory,  and  in  order  that  he  may  earn  some 
profits  from  his  invention.  The  law  distinguishes 
between  use  or  sale  to  test  an  invention,  and  public 
use  or  sale  after  it  is  evident  the  invention  is  com- 
plete. Use  to  test  the  invention  to  see  whether  it 
is  perfect  and  complete,  which  the  law  calls  "  experi- 
mental use,"  does  not  count.  It  is  only  two-years 
public  use  or  sale  after  the  invention  is  complete 
that  will  destroy  the  right  to  a  patent.  The  case 


PATENTING    NEW   PRODUCT  83 

of  the  Nicholson  wooden  pavement,  which  was 
first  laid  in  Elizabeth,  New  Jersey,  illustrates  this. 
Nicholson  laid  his  pavement  in  the  public  street, 
and  the  court  held  that  a  certain  amount  of  use  of 
this  pavement  in  this  public  way  was  only  experi- 
mental use  in  order  that  he  might  determine 
whether  the  pavement  was  satisfactory,  and  that 
the  two  years  did  not  begin  to  run  until  the  experi- 
mental period  was  over. 

To  summarize:  in  putting  out  a  new  product, 
the  product  should  be  protected  by  a  patent  on  the 
product  itself  if  possible.  If  not,  then  it  should  be 
protected,  if  possible,  either  by  inventing  and 
patenting  a  new  process  by  which  the  product  can 
be  made  better  or  cheaper  than  before,  or  by 
inventing  and  patenting  a  machine  for  that  purpose. 
If  none  of  these  ways  is  feasible,  it  should  be  con- 
sidered whether  or  not  the  product  cannot  be  tied 
up  in  some  way  with  a  patent  on  some  other  product, 
process,  or  machine.  In  seeking  to  produce  any  of 
these  inventions  through  employees,  the  precau- 
tions should  be  observed  which  will  be  stated  in  the 
following  chapter. 


CHAPTER  VI. 

THE   PATENT  RELATIONS  OF  EMPLOYER 
AND  EMPLOYEE. 

THERE  are  three  principal  points  to  be  con- 
sidered in  the  patent  relations  of  employer 
and  employee  as  to  inventions  made  by  them.  First 
it  is  necessary  to  determine  who  in  the  eyes  of  the 
law  is  the  actual  inventor  of  a  particular  invention, 
because  a  patent  is  valid  only  when  granted  in  the 
name  of  the  inventor.  The  fact  that  someone  else 
than  the  one  who  conceived  the  invention  owns 
the  right  to  the  patent,  or  furnished  the  money 
with  which  the  invention  wras  developed,  ./does  not 
make  him  the  inventor,  and  the  patent  would  be 
invalid  if  granted  in  the  name  of  the  owner  or  the 
backer  who  did  not  participate  in  the  inventive 
act.  Second,  where  an  employee  is  concerned  in  the 
making  or  development  of  an  invention,  it  is  neces- 
sary to  determine  whether  or  not  the  employer  is 
entitled  to  the  ownership  of  the  patent  granted  on 
the  employee's  application  and,  therefore,  to  the 
right  to  prevent  everyone  else  from  making,  using 
or  selling  the  invention;  and,  third,  if  the  employer 
is  not  entitled  to  the  patent,  whether  he  has  a  right 

84 


PATENT   RELATIONS    WITH    EMPLOYEES  85 

himself  to  make,  use,  and  sell  the  invention  in 
competition  with  others  who  might,  by  the  em- 
ployee, be  given  rights  under  the  patent. 

EMPLOYEE'S  INVENTIONS.   - 

Many  an  inventor  is  not  a  mechanic,  and  is  not 
even  sufficiently  practical  to  work  out  the  details  of 
an  invention,  so  that  it  is  necessary  for  him  to 
employ  the  skill  of  someone  else  actually  to  con- 
struct the  invention.  A  complete  inventive  act  con- 
sists of  a  mental  conception  of  the  invention  folio  wed 
by  a  reduction  of  the  invention  to  practice.  If  an 
employer  forms  a  complete  mental  conception  of 
the  invention  and  then  has  his  employee  construct 
the  thing  he  has  conceived,  the  employer  is  regarded 
as  the  inventor.  The  relation  of  employer  and 
employee  exists  not  only  where  a  manufacturer 
uses  his  own  regularly  employed  mechanic,  but 
where  any  inventor  employs  any  mechanic  to 
reduce  his  invention  to  practice.  In  this  sense  a 
corporation  employed  to  build  a  machine  embody- 
ing an  invention  would  be  an  employee  as  to  the 
inventor.  If  there  arises  any  controversy  as  to 
who  made  the  invention — that  is,  as  to  whether  the 
employer  or  the  employee  made  the  invention — the 
presumption  is  that  the  employer  made  it,  and  the 
employee  must  show  by  convincing  proof  that  he 
made  the  invention  before  his  claim  will  be  enter- 
tained. 


86  PATENTS   IN   MANUFACTURING 

For  instance,  a  shoe  manufacturer  had  trouble 
with  his  operatives  and  found  it  desirable  to 
have  a  machine  for  nailing  the  heel  to  the  shoe 
which  would  be  sufficiently  perfect  to  require  only  a 
class  of  labor  that  could  easily  be  trained,  so  that  a 
strike  of  the  trained  operatives  could  be  broken 
by  training  in  new  hands.  He  went  to  machinists 
and  outlined  a  machine  to  accomplish  his  purpose. 
The  manufacturer  described  the  principal  elements 
of  the  machine,  and  how  they  wrould  work  with 
relation  to  each  other.  When  the  machine  was 
completed  the  machinists  claimed  to  have  invented 
certain  features,  and  filed  an  application  for  patent 
in  opposition  to  that  of  the  manufacturer.  The 
court  held  that  where  one  is  employed  for  the 
special  purpose  of  carrying  out  the  conception  of 
another  person,  the  one  who  builds  the  machine 
stands  in  the  relation  to  the  one  who  conceives  it, 
of  employee  to  employer,  and  there  is  a  strong  pre- 
sumption that  the  machine,  when  completed,  is 
the  invention  of  the  employer,  and  the  court  held 
that  under  the  burden  of  that  presumption,  the 
machinists  had  failed  to  prove  their  case. 

There  was  an  inventor  who  had  patented  a  reel 
for  use  in  rod  mills.  He  made  a  contract  with  an 
engineering  company  whereby  the  company  under- 
took to  install  his  reels  wherever  they  had  an  oppor- 
tunity, and  the  company  also  undertook  to  perfect 


PATENT   RELATIONS   WITH    EMPLOYEES  87 

the  machine  in  its  details.  The  president  of  the  com- 
pany improved  the  machine  in  its  details  and  filed 
an  application  for  patent  for  the  improvement.  The 
president  obtained  his  patent  before  the  inventor 
was  aware  of  what  had  happened.  The  inventor 
upon  seeing  the  notice  of  the  patent  issued,  filed  an 
application  for  a  patent  for  the  same  invention 
and  claimed  that  he  had  disclostfcl  the  improve- 
ments to  the  president  of  the  contracting  com- 
pany. The  court  held  that  the  president  of  the 
company  had  put  himself  in  the  relation  of  employee 
to  the  inventor  as  employer,  and  that  therefore 
the  presumption  was  in  favor  of  the  inventor  and 
against  the  president,  and  granted  a  second  patent 
to  the  inventor.  Incidentally  it  may  be  observed 
that  there  were  in  this  case  two  patents  in  existence 
for  the  same  invention,  one  erroneously  granted 
to  the  president  of  the  contracting  company,  and 
the  other  rightfully  granted  to  the  inventor  for  the 
improvements.  The  Patent  Office  has  no  power  to 
cancel  a  patent  after  it  is  granted,  but  there  are 
provisions  of  the  patent  law  under  which  a  court 
can  declare  void  erroneously  issued  patents,  and  in 
this  way  the  patent  to  the  president  of  the  contract- 
ing company  could  be  gotten  out  of  the  way. 
While  it  was  in  force,  it  would  of  course  be  more 
or  less  of  a  cloud  on  the  patent  to  the  inventor. 
In  order  that  the  employer  may  be  regarded  as 


88  PATENTS   IN   MANUFACTURING 

the  inventor  by  the  law,  it  is  necessary  that  he  do 
more  than  merely  to  suggest  the  desirability  of  an 
invention  for  a  given  purpose.  He  must  not  only 
suggest  that  desirability,  but  he  must  show,  at  least 
in  a  general  way,  how  the  machine,  for  instance, 
is  to  be  constructed.  If  Edison  had  suggested  to 
an  employee  that  it  was  desirable  to  be  able  to 
transmit  electricity  with  something  less  than  two 
wires  for  every  circuit,  and  his  employee  had  con- 
ceived of  the  three-wire  circuit,  by  which  the  middle 
wire  serves  both  for  the  outgoing  current  of  the  one 
circuit  and  the  incoming  current  of  the  other  circuit, 
Edison  would  not  have  been  the  inventor,  but  the 
employee  would  have  been.  The  idea  is  that  until 
a  person  has  actually  conceived  how  to  make  an 
invention  that  will  accomplish  a  given  purpose, 
he  has  done  the  public  no  service  to  offer  in  re- 
turn for  a  patent.  The  law  provides  only  for  the 
granting  of  patents  to  the  original  and  first  actual 
inventors. 

Where  the  employer  furnishes  a  complete  con- 
ception of  the  invention,  such,  for  instance,  as 
would  be  evidenced  by  working  drawings,  there  is 
no  question  that  the  employer  is  the  inventor.  It 
is  often  the  case,  however,  that  the  employer  has 
a  general  idea  of  how  a  successful  invention  could 
be  built,  but  he  is  not  sufficiently  practical,  or 
does  not  have  the  time,  to  work  out  minor  features 


PATENT    RELATIONS    WITH    EMPLOYEES  89 

which  still  require  some  inventing  as  distinguished 
from  the  skill  of  the  mechanic.  He  has  an  idea  of 
the  main  features  of  a  machine,  for  instance,  and 
how  they  are  to  operate  in  relation  to  each  other, 
but  he  does  not  know  how  to  arrange  the  gearing 
for  operating  the  main  parts.  The  employer  puts 
an  employee  to  work  on  the  problem,  and  perhaps 
a  good  deal  of  experimenting  is  necessary  before  a 
successful  result  is  arrived  at.  In  this  case  the  law 
regards  the  employer  not  only  as  the  owner  of  the 
entire  invention,  but  as  the  actual  inventor  of  the 
details  which  the  employee  worked  out.  They  are 
properly  included  in  a  patent  granted  to  the 
employer  as  the  sole  inventor. 

Where  the  employee's  suggestions  are  so  separate 
from  the  invention  of  the  employer  that  they  form 
in  themselves  complete  inventions  and  are  not 
merely  auxiliary  or  tributary  to  the  main  invention, 
the  employee  is  regarded  as  the  inventor. 

IN  WHOSE  NAMES  PATENTS  ARE  TO  BE  TAKEN. 

The  law  provides  for  the  granting  of  patents  only 
to  the  actual  inventor  of  the  patented  invention, 
and  a  patent  granted  in  the  name  of  anyone  else 
is  invalid.  For  this  reason  it  is  essential  that  the 
application  for  patent  be  made  in  the  name  of  the 
one  whom  the  law  regards  as  the  inventor.  In  some 
factories  it  is  the  custom  to  patent  every  invention 


90  PATENTS   IN   MANUFACTURING 

in  the  name  of  the  president  of  the  company.  This 
frequently  happens  because  the  company  has  been 
built  up  on  inventions  made  by  the  president  or 
other  officer,  and  as  a  matter  of  pride  the  president 
wishes  to  see  all  patents  issued  in  his  name.  This  is  a 
dangerous  thing  to  do  in  the  case  of  inventions  which 
were  conceived  by  the  employee  independently 
of  the  officer,  such  as  inventions  wholly  worked 
out  by  employee  without  suggestion  or  assistance 
from  the  officer;  for  if,  in  a  suit  brought  under  such 
patent,  it  were  shown  that  while  the  patent  was 
granted  in  the  name  of  the  officer,  the  invention 
was  actually  made  by  an  employee,  the  patent 
would  be  declared  invalid,  and  usually  a  suit  would 
not  have  reached  such  a  stage  until  it  was  too  late 
to  go  back  and  patent  the  invention  in  the  name  of 
the  real  inventor.  This  would  be  because  a  valid 
patent  cannot  be  obtained  on  an  application  for 
patent  filed  more  than  two  years  after  the  invention 
has  gone  into  public  use  in  the  United  States,  or 
after  specimens  of  the  invention  have  been  placed 
on  sale  in  the  country.  There  are  other  bars  which 
also  might  prevent  the  grant  of  a  patent  at  the  time 
mentioned;  such  as  the  fact  that  a  description  of 
the  invention  might  have  appeared  in  a  publica- 
tion for  more  than  two  years.  The  description 
would,  however,  have  to  be  so  full  and  complete 
that  any  person  skilled  in  the  art  could  make  and 


PATENT   RELATIONS   WITH   EMPLOYEES  91 

use  the  invention  from  the  knowledge  furnished 
by  the  description  alone,  and  without  the  exercise 
of  the  inventive  faculty. 

INVENTION  MADE  BY  AN  EMPLOYEE. 

Where  an  employer  employs  clever  men  and  has 
them  instructed  in  the  details  of  his  business,  he 
lays  himself  peculiarly  open  to  the  possibility  that 
his  employees  may  make  inventions  which  would 
seriously  hurt  his  business  if  he  had  to  compete 
with  them,  •it  therefore  becomes  exceedingly  im- 
portant to  consider  what^are  the  employer's  rights 
under  these  circumstances. 

The  mere  fact  that  an  inventor  is  in  the  employ 
of  another  when  he  makes  an  invention  does  not 
give  his  employer  any  claims  upon  his  invention. 
If,  for  instance,  the  employee  makes  an  invention  out 
of  working  hours  and  in  his  own  home,  and  does  not 
use  the  time  or  materials  or  employees  of  his 
employer  in  perfecting  the  invention,  the  employer, 
in  the  absence  of  a  contract,  has  no  claim  what- 
ever on  the  invention  even  though  it  relates  to  the 
employer's  business,  v 

Supposing,  however,  the  employee  makes  an 
invention  in  the  shops  of  his  employer,  and  perfects 
it  there,  using  his  employer's  time  and  materials, 
and  the  assistance  of  his  fellow-employees  in  per- 
fecting the  invention.  There  are  two  things  to 


92  PATENTS   IN   MANUFACTURING 

be  considered;  first,  the  employer's  right  to  make, 
use,  and  sell  the  invention;  and  second,  his 
right  to  a  monopoly  of  the  invention — that  is, 
his  right  to  exclude  others  from  making  or 
using  or  selling  the  invention.  Under  the  circum- 
stances which  I  have  supposed,  the  courts  have 
held  that  an  employer  acquires  a  shop-right  or  a 
license  to  make  and  use  the  invention  in  his  own 
shops  and  to  sell  the  articles  so  made;  but  he  does 
not,  in  the  absence  of  a  contract,  acquire  any  right 
to  the  title  to  a  patent  on  the  invention,  and  there- 
fore does  not  acquire  any  right  to  prevent  others 
from  making  or  using  or  selling  the  patented  inven- 
tion. The  employee  can  license  his  employer's 
competitors  to  make  and  use  and  sell  the  same  inven- 
tion, and  thus  thereby  create  all  the  competition 
that  is  possible,  but  the  employee  can  never  enjoin 
his  employer  from  making  or  using  or  selling  the 
invention. 

Even  where  the  inventor  is  especially  employed 
to  invent,  unless  the  contract  unequivocally  pro- 
vides that  the  title  to  patents  on  the  inventions  shall 
be  assigned  to  the  employer,  the  employer  cannot 
compel  an  assignment  df  the  invention.  A  couple 
of  examples  of  adjudicated  cases  will  make  this 
matter  clearer: 

An  employee  of  a  watch-case  manufacturing 
company  was  working  as  a  tool  maker  when,  as  the 


PATENT   RELATIONS    WITH    EMPLOYEES  93 

company  alleged,  he  came  to  the  president  and 
stated  orally  that  if  his  wages  were  increased  (from 
$25  to  $30)  he  believed  he  could  make  improve- 
ments that  would  be  valuable.  No  written  con- 
tract was  made.  The  employee's  wages  were 
increased  and  he  was  given  men  and  materialsto 
carry  out  his  ideas.  The  improvements  were  suc- 
cessfully made,  and  an  application  for  patent  was 
made,  the  company  paying  the  expenses  connected 
with  it.  The  patent  issued  to  the  employee,  and 
the  company  demanded  an  assignment  to  the  com- 
pany, claiming  that  the  employee  had  agreed 
that,  if  the  company  would  pay  the  expenses  of  the 
patent,  he  would  assign  it  to  the  company  with- 
out further  consideration  than  his  increased  wages. 
The  employee  denied  that  he  had  ever  agreed  to  as- 
sign the  patent  to  the  company,  and  left  the  employ 
of  the  company.  The  company  brought  a  suit  to 
compel  an  assignment  of  the  patent.  The  Supreme 
Court  of  the  United  States  refused  to  compel  an  as- 
signment of  the  patent,  holding  that  it  would  compel 
such  action  only  in  cases  where  a  contract  to  assign 
the  patent  had  been  clearly  proven,  and  that  it 
was  improbable  the  employee  had  offered  to  assign 
the  patent,  merely  if  the  company  would  pay  the 
expenses  of  obtaining  it,  and  without  any  benefit 
to  himself,  such  as  a  covenant  to  employ  him  for  a 
stated  period  and  at  a  stated  salary. 


94  PATENTS   IN   MANUFACTURING 

One  Hansen  was  chief  engineer  of  a  company 
making  pressed-steel  cars,  at  a  salary  beginning 
with  $4,000  and  running  up  finally  to  $10,000  per 
year.  The  company  contended  that  at  the  time 
Hansen  entered  its  employ,  there  was  an  oral 
agreement  that  all  inventions  and  improvements 
he  might  make  while  in  its  employ,  and  any 
patents  obtained  thereon,  should  belong  to  the 
company.  There  was,  however,  no  written  con- 
tract, and  Hansen  denied  having  made  any  oral 
contract.  During  his  employment,  many  inven- 
tions were  made  by  Hansen  and  during  the  early 
part  of  the  employment  Hansen  assigned  all  the 
patents  he  obtained  to  the  company.  When  he 
finally  left  its  employ,  there  were  six  applications 
pending  in  the  Patent  Office  for  inventions  Han- 
sen had  made  during  his  emplojnnent.  These 
applications  had  been  prepared  by  the  company's 
attorney  at  the  company's  expense.  The  com- 
pany demanded  that  Hansen  assign  these  applica- 
tions to  the  company,  but  he  refused  to  do  so. 
Suit  was  brought  to  compel  an  assignment;  but 
Hansen  resisted,  saying  he  had  assigned  the  earlier 
patents  and  applications,  because  he  was  young  and 
did  not  realize  his  rights,  but  that  was  no  reason 
why  he  should  assign  the  remaining  ones.  The  six 
inventions  in  question,  Hansen  said,  were  worked  out 
by  him  in  his  own  home  and  not  at  the  company's 


PATENT   RELATIONS   WITH   EMPLOYEES  95 

shops.  The  United  States  Circuit  Court  of  Appeals 
held  that  no  contract  was  proven  and  refused  to  com- 
pel an  assignment  of  the  applications.  Then  the 
company  contended  that  the  mere  relation  of 
employer  and  employee,  coupled  with  the  fact  that 
Hansen  admitted  it  was  part  of  his  duty  to  design 
and  improve  the  products  of  the  company,  gave 
it  a  right  to  the  title  to  the  patents.  But  the  court 
held  that  nothing  short  of  an  express  contract  to 
assign  the  patents  to  the  company  could  give  the 
company  a  right  to  the  title  to  the  patents,  what- 
ever might  be  its  right  to  a  shop  right  or  an  unassign- 
able license.  The  Supreme  Court  of  the  United 
States  has  decided  that  even  a  Government 
employee  who  invented  a  self-cancelling  revenue 
stamp  (using  Government  employees  and  materials 
to  work  it  out)  and  afterwards  patented  it,  is 
entitled  to  the  ownership  of  the  patent,  subject  to 
a  license  to  the  Government  to  make  and  use  the 
stamp. 

Where,  however,  an  employee  agrees  to  assign 
to  an  employer  patents  upon  any  inventions  which 
he  may  make  while  in  his  employment,  even  though 
the  only  consideration  for  the  contract  is  the  salary 
which  the  employee  is  to  receive,  and  even  though 
that  salary  is  not  larger  than  it  would  otherwise 
be,  the  courts  will  enforce  the  contract.  I  refer 
to  two  specific  cases  of  contracts  of  this  sort,  which 
have  been  sustained  by  the  courts. 


96  PATENTS   IN   MANUFACTURING 

A  machinist  made  the  following  contract  with  a 
company  manufacturing  cigarette  machines : 

That  the  said  company  has  this  day  employed 
the  said  Hulse  to  set  up  and  operate  its  cigarette 
machines  at  a  salary  of  $50  for  the  first  month, 
and  $65  per  month  thereafter,  with  such  advance  of 
salary  up  to  not  exceeding  $75  per  month  as  the 
services  of  the  said  Hulse  may  justify.  *  *  * 
The  said  Hulse  agrees  to  do  all  in  his  power  to  pro- 
mote the  interests  of  the  said  company,  and  in  case 
he  can  make  any  improvements  in  cigarette  machines 
whether  the  same  be  made  while  in  the  employment 
of  the  said  company  or  at  any  time  thereafter, 
the  same  shall  be  for  the  exclusive  use  of  the  said 
company.  And  it  is  agreed,  that  in  case  the  said 
Hulse  be  not  able  to  serve  the  said  company  suffi- 
ciently, or  shall  in  any  way  neglect  his  duty,  the 
company  may  stop  his  services  at  any  time,  paying 
up  to  such  time;  but  in  case  the  said  Hulse  desires 
to  quit  the  said  company,  he  shall  give  sixty  days 
notice  thereof. 

After  this  contract  was  executed,  Hulse  made  an 
improvement  in  cigarette  machines,  patented  it, 
and  demanded  $100,000  from  the  company  for 
it.  The  United  States  Court  of  Appeals  held  the 
contract  to  entitle  the  company  to  the  title  to  the 
patent.  The  Court  did  not  decide  whether  the 
provision  covering  inventions  made  after  leaving 
the  employment  of  the  company  was  valid,  as 
that  was  not  involved  in  the  case. 

A  man  named  Franzen  entered  the  employ  of  a 


PATENT   RELATIONS   WITH   EMPLOYEES  97 

company  manufacturing  wire-glass  or  glass  having 
wire  imbedded  in  it  to  strengthen  it.  The  salary  was 
$100  per  month,  and  before  beginning  work  Fran- 
zen  signed  a  contract  containing  the  following  pro- 
visions : 

First.  The  employer  is  engaged  in  the  manufac- 
ture of  glass,  glass-ware,  and  mechanical  devices 
in  connection  therewith,  and  that  such  manufacture 
is  carried  on  by  means  of  certain  secret  formulas, 
methods,  processes,  tools,  machinery,  patterns,  and 
appliances,  and  the  same  are  the  property  of  the 
employer,  and  intended  to  be  kept  and  guarded  by 
the  employer  as  secrets;  and  that  all  knowledge  and 
information  which  the  employee  now  possesses,  or 
shall  hereafter  acquire,  respecting  such  secrets, 
and  all  inventions  and  discoveries  made  by  said 
employee  during  the  term  of  his  employment,  shall 
at  all  times,  and  for  all  purposes,  be  regarded  as 
acquired,  and  held  by  the  employee  in  a  fiduciary 
capacity,  and  solely  for  the  benefit  of  the  employer. 

Fourth.  That  the  employee  will,  when  required, 
make  and  execute  any  and  all  assignments  in  writing 
which  may  be  deemed  by  the  employer  proper  and 
necessary  to  transfer  and  vest  in  the  employer  the 
entire  right,  title,  and  interest  in  all  inventions  and 
discoveries  made  by  the  employee  during  the  term 
of  his  employment. 

The  employee  finally  left  the  employ  of  the  com- 
pany and  forty  days  afterwards  applied  for  a  patent 
for  a  method  of  making  wire-glass.  The  company 
brought  suit  to  compel  him  to  assign  the  patent 
to  the  company.  Franzen  contended  that  he  had 


98  PATENTS   IN   MANUFACTURING 

made  the  invention  before  he  entered  the  employ 
of  the  company.  It  was  shown  that  he  had  made 
statements  to  various  employees  that  he  had  never 
seen  wire-glass  made  before  he  saw  it  made  at  the 
works  of  the  present  company,  It  was  also  shown 
that  on  Sunday  night,  after  midnight,  and  outside  of 
the  regular  working  time  of  the  factory,  he  got  the 
night  engineer  to  start  the  engine,  and  that  he  made 
wire-glass  with  the  company's  machinery  accord- 
ing to  his  process.  Each  of  the  three  persons  who 
were  present  was  cautioned  to  keep  the  matter 
secret.  The  court  found  that  the  invention  was 
made  during  the  period  of  employment,  and  also 
held  that  the  contract  was  mutual  and  was  proper 
and  necessary  for  the  protection  of  the  company's 
business,  and  that  it  was,  therefore,  not  invalid 
on  the  ground  of  public  policy,  and  a  decree  was 
granted,  compelling  the  employee  to  assign  the 
patent  to  the  company. 

The  following  is  a  contract  which  not  only  pro- 
vided that  the  employee  should  assign  to  an  employer 
inventions  made  during  his  employment,  but  also 
provided  that  if  the  employer  did  not  wish  to  patent 
any  of  the  inventions,  the  employee  should  keep 
them  secret. 

Whereas,  Herbert  L.  Hildreth  of  Boston,  candy 
manufacturer,  is  desirous  of  having  perfected  and 
manufactured  a  certain  machine  or  machines  for  use 


PATENT   RELATIONS   WITH   EMPLOYEES  99 

in  the  manufacture  of  candy,  and  especially  for  sizing, 
shaping,  cutting,  wrapping,  and  packing,  also  the 
pulling  of  molasses  candy,  and  whereas  I,  Charles 
Thibodeau,  being  a  skilled  mechanic,  am  desirous 
of  entering  the  employ  of  said  Hildreth  for  the  pur- 
pose of  constructing,  improving  and  perfecting  such 
machinery:  Now,  therefore,  in  consideration  of  such 
employment,  and  of  the  payment  of  wages  to  me 
at  the  rate  of  ($3.25)  three  dollars  and  twenty-five 
cents  per  day,  I  hereby  agree  with  said  Hildreth  to 
enter  his  employ,  and  that  I  will  give  him  my  best 
services,  and  also  the  full  benefit  and  enjoyment  of 
any  and  all  inventions  or  improvements  which  I  have 
made  or  may  hereafter  make  relating  to  machines 
or  devices  pertaining  to  said  Hildreth's  business.  I 
also  further  agree  that  should  said  Hildreth  not 
desire  to  patent  any  of  said  inventions  or~improve- 
ments,  but  to  keep  same  secret,  I  will  do  all  in  my 
power  to  assist  him  in  this,  and  will  not  disclose  any 
information  as  to  the  same,  or  any  of  them,  except  at 
the  request  of  the  said  Hildreth. 

The  employee  claimed  to  have  made  an  invention 
during  the  employment,  and  made  application  for 
a  patent  thereon.  The  employer  brought  a  bill  to 
compel  an  assignment  of  the  application,  and  the 
employee  retaliated  with  a  cross-bill  asking  for  the 
delivery  up  and  cancellation  of  the  contract  on  the 
ground  that  it  was  unconscionable.  The  court  held 
that  the  contract  was  valid  and  was  but  a  proper 
protection  of  the  employer's  business,  and  that  the 
employee  was  bound  to  keep  perpetually  secret 
inventions  made  during  the  period  of  employment. 


100  PATENTS    IN    MANUFACTURING 

The  courts  realize  the  extent  to  which  an  employer 
is  open  to  attacks  by  his  employees  in  the  line  of 
inventions  and  are  quick  to  protect  him  within 
the  limits  I  have  stated.  There  was  an  employee 
of  a  veneer  manufacturer  who  invented  an  improved 
veneer-cutting  machine  and  sold  the  patent  to  his 
employer.  The  employee  afterwards  went  to  another 
city  and,  stating  to  some  capitalists  that  he  knew 
the  patent  was  invalid,  offered  to  build  a  number 
of  such  machines  for  them.  The  employee  then 
went  to  the  machinists  who  had  made  the  veneer 
cutting  machines  for  the  employer,  and  got  a  casting 
made  from  his  employer's  pattern  of  the  principal 
part  of  the  machine,  and  this  casting  was.  shipped 
to  the  other  city.  The  employer  put  detectives 
on  the  matter  and  traced  the  pattern  and  found 
that  a  machine  was  completed  and  was  ready  for 
shipment  to  the  timber  district.  The  court  granted 
a  temporary  restraining  order,  enjoining  the  em- 
ployee and  the  capitalists  and  the  machinists  who  had 
made  the  machine,  from  moving  the  machine  until 
the  employer's  rights  had  been  settled.  The 
employee  would  never  be  heard  to  state  that  the 
patent  he  had  sold  for  a  valuable  consideration 
was  invalid,  because  he  would  then  be  seeking  to 
destroy  the  value  of  that  for  which  he  had  received 
pay,  and  the  capitalists  were  not  permitted  to  use 
the  machine,  because  they  had  associated  them- 
selves with  the  employee. 


PATENT  RELATIONS   WITH   EMPLOYEES          101 

In  view  of  the  foregoing  it  is  evident  that  it  is 
desirable  to  have  a  contract  with  every  employee 
who  is  at  all  likely  to  make  inventions  which  relate 
to  the  business  of  the  employer,  and  as  the  courts 
will  sustain  such  contracts,  even  though  they  con- 
tain no  further  provision  for  return  for  the  inven- 
tions than  the  payment  of  the  ordinary  salary, 
the  employer  should  have  such  a  contract  with 
every  such  employee.  There  are  manufacturing 
concerns  where  every  man  in  the  drafting  room  and 
in  the  sales  department,  and  every  skilled  employee, 
is  under  such  a  contract.  The  difficulty  of  inducing 
the  employees  to  sign  such  a  contract  will  be 
reduced  if  the  officers  of  the  company  will  set  the 
example  by  signing  such  a  contract.  This  is  often 
a  mere  matter  of  form,  as  the  officer  is  frequently 
a  man  who  is  either  not  inventive,  or  one  who  is 
glad  to  take  his  returns  in  the  form  of  dividends 
from  the  stock. 

EMPLOYER'S  AND  EMPLOYEE'S  LIABILITIES  AS  TO 
INFRINGEMENT. 

Where  an  employer  directs  an  employee  to  make, 
use  or  sell  an  invention  which  is  the  subject  of  a 
patent,  the  employer  himself  is  liable  in  an  action 
for  infringement  on  the  principle  that  what  one 
does  through  another  he  does  by  himself.  And 
even  where  an  employee  commits  an  act  of  infringe- 


102  PATENTS   IN   MANUFACTURING 

ment,  for  the  benefit  of  his  employer  but  without 
the  knowledge  of  his  employer,  the  employer  is 
still  liable  if  he  afterwards  approves  of  the  act,  or 
knowingly  takes  benefit  from  the  act,  such  as  taking 
the  profits  from  the  sale  of  a  machine.  In  -con- 
sidering the  liability  of  the  employer  for  damages, 
it  is  immaterial  that  he  did  not  know  that  the  act 
was  an  infringement  of  a  patent.  If  the  employee 
is  one  vested  with  discretion  as  to  the  conduct  of 
the  business,  and  he  directs  or  commits  an  act  of 
infringement,  the  courts  in  many  circuits  hold  that 
the  employee,  as  well  as  the  company,  may  be 
enjoined.  Thus,  a  sales  agent  selling  goods  on  com- 
misson  may  be  enjoined.  A  foreman  of  a  factory  is 
liable  for  infringements  which  he  directs.  But  a 
mechanic  who  commits  an  act  of  infringement  at 
the  command  of  his  employer  is  not  liable  in  dam- 
ages, although  he  may  be  restrained  with  the 
employer. 


CHAPTER  VII. 

CONTESTS  BETWEEN    RIVAL  CLAIMANTS 
TO  AN   INVENTION. 

WHEN  an  inventor  gets  into  the  Patent  Office 
and  finds  another  is  claiming  the  right  to  a 
patent  for  the  same  invention,  it  usually  develops 
that  his  own  right  to  prevail  over  the  other  claim- 
ant depends  upon  the  history  of  the  invention 
before  the  application  was  filed,  and  his  success  or 
failure  in  the  contest  will  frequently  depend  on  acts 
or  omissions  in  that  history  which  were  entirely 
within  his  control,  and  on  his  ability  to  prove  those 
acts  which  were  essential.  Usually,  too,  all  this  his- 
tory is  made  before  the  invention  is  ready  to  patent 
and  therefore  before  it  is  brought  to  the  attention 
of  counsel,  so  that  the  acts  and  the  laying  of  the 
foundation  for  their  proof  depend  entirely  upon  the 
unadvised  judgment  of  the  inventor,  or  those  own- 
ing the  invention.  It  is  therefore  of  importance 
that  those  having  to  do  with  inventions  should  have 
sufficient  knowledge  of  the  general  principles  upon 
which  such  contests  are  decided  to  arrange  those 
things  which  are  in  their  control  so  as  to  give  them 
the  best  possible  chance  of  a  favorable  decision. 

103 


104  PATENTS   IN   MANUFACTURING 

The  production  of  an  invention  begins  with  a 
mental  conception  and  ends  with  a  reduction  to 
practice.  The  conception  of  an  invention  does  not 
consist  in  perceiving  the  mere  desirability  of  accom- 
plishing a  certain  object,  but  it  consists  of  a  com- 
plete working  idea  of  at  least  the  principal  elements 
of  some  means  for  accomplishing  that  object, 
and  of  the  correlation  of  those  elements.  This 
difference  between  a  perception  of  the  desirability 
of  accomplishing  a  certain  object,  and  the  concep- 
tion of  the  invention,  might  be  illustrated  in  this 
way.  Many  people  before  Bell  had  thought  of  the 
desirability  of  being  able  to  talk  at  a  distance  by 
means  of  electricity.  This,  however,  did  not 
benefit  the  public  in  any  way.  The  public  was  no 
more  able  to  talk  at  a  distance  than  it  had  been 
before.  Bell,  however,  thought  out  in  his  own 
mind  how  a  telephone  should  be  constructed  which 
would  transmit  speech  at  a  distance  by  means  of 
electricity.  This  conception  of  Bell's  would,  if 
put  into  practice,  give  the  public  practical  posses- 
sion of  the  invention.  When  a  telephone  had  actu- 
ally been  constructed  according  to  Bell's  concep- 
tion and  used,  the  invention  was  what  is  known  as 
"reduced  to  practice."  The  conception  alone  does 
not  make  an  inventive  act.  A  man  might  fully 
conceive  how  to  make  a  valuable  machine,  but  if 
he  never  puts  that  conception  into  practice,  he 


CONTESTS    BETWEEN   RIVAL   CLAIMANTS         105 

has  done  the  public  little  or  no  service,  and  the 
law  does  not  regard  him  as  an  inventor.  To  illus- 
trate further :  Suppose  a  person  perceived  the  desira- 
bility of  making  chain  from  a  wire  rod  by  an  auto- 
matic machine.  This  would  not  in  any  sense  be  a 
conception  of  an  invention  within  the  meaning  of 
the  law.  But  suppose  he  clearly  thought  out  the 
shape  of  the  parts  which  were  to  cut  off  the  blank 
from  the  rod  and  bend  the  blank  into  a  link,  and 
to  thread  the  next  blank  through  the  link  and  bend 
it  into  a  link,  so  that  he  knew  exactly  the  shape  and 
relative  motions  and  times  of  operation  of  the  several 
parts  which  would  operate  directly  upon  the  blank 
and  link.  If  the  conception  was  so  fully  worked 
out  that  any  mechanic  of  ordinary  skill  could  supply 
what  was  missing  in  the  way  of  gearing  for  operating 
some  of  these  parts,  the  conception  would  be  con- 
sidered complete  even  though  such  parts  had  not 
been  worked  out.  The  invention  would,  however, 
be  reduced  to  practice  only  when  a  machine  had 
actually  been  constructed. 

The  law  considers  the  filing  in  the  Patent  Office 
of  an  allowable  application  for  patent  the  equiva- 
lent of  an  actual  reduction  to  practice.  Bell's 
application  for  patent  for  the  telephone  was  in  a 
contest  with  other  inventors,  and  the  evidence  did 
not  show  that  Bell  ever  actually  made  a  telephone 
work  to  transmit  speech  before  the  filing  of  his 


106  PATENTS   IN   MANUFACTURING 

application  for  patent;  but  as  his  application  for 
patent  fully  described  how  such  a  telephone  should 
be  built,  the  Supreme  Court  of  the  United  States 
held  that  the  filing  of  this  allowable  application  for 
patent  raised  a  presumption  that  he  had  actually 
and  physically  reduced  the  invention  to  practice 
at  the  time  of  filing  the  application,  and  that  there- 
fore the  filing  of  the  application  was  a  "  construc- 
tive reduction  to  practice"  and  counted  for  him  the 
same  as  if  he  had  actually  constructed  and  opera- 
ted such  a  telephone. 

Conception  Dfligenc*  Reduction  to  Practice 

FIG.  1.      DIAGRAM  OF  THE  PRODUCTION  OF  AN  INVENTION. 

The  theory  of  the  law  is  that  the  production  of  an 
invention  is  a  single  act,  beginning  with  the  concep- 
tion and  ending  with  the  reduction  to  practice, 
and  the  law  awards  the  patent  to  that  inventor 
who  first  conceived  the  invention,  whether  or  not 
he  was  the  first  to  reduce  the  invention  to  practice, 
so  long  as  the  time  between  his  conception  and 
reduction  to  practice  was  occupied  by  reasonably 
diligent  efforts  to  reduce  the  invention  to  practice. 
This  act  may  cover  a  considerable  period.  Many 
months  may  elapse  between  the  conception  of  the 
invention  and  its  reduction  to  practice  provided  the 
inventor  is  reasonably  diligent  in  his  efforts  to  reduce 


CONTESTS    BETWEEN    RIVAL    CLAIMANTS         107 

the  invention  to  practice,  or,  at  the  time  of  the  ad- 
vent of  his  rival,  was  exercising  reasonable  diligence. 
Thus  a  complete  inventive  act  consists  of  a  complete 
conception  of  the  invention  followed  by  a  reduction 
of  the  invention  to  practice,  the  conception  being 
coupled  to  the  reduction  to  practice  by  reasonable 
diligence.  The  inventive  act  might  be  illustrated 
by  the  diagram  in  Figure  1,  in  which  the  first  verti- 
cal line  represents  the  conception,  the  horizontal 
line  represents  the  diligence,  and  the  second  verti- 
cal line  represents  the  reduction  to  practice. 

CONCEPTION  OF  THE  INVENTION. 

While  the  nature  of  the  conception  of  an  inven- 
tion has  been  pretty  fully  indicated  before,  some 
further  discussion  of  it  may  be  desirable.  The  con- 
ception of  the  invention  must  originate  in  the  mind 
of  the  inventor.  He  cannot  be  entitled  to  a  patent 
if  he  obtains  knowledge  of  the  invention  in  any  other 
way  than  by  generating  the  idea  in  his  own  mind. 
It  may  come  in  a  flash,  or  it  may  be  the  result  of 
months  or  years  of  experiment  and  thought.  It 
may  be  suggested  to  the  inventor  by  something  not 
the  invention.  For  instance,  a  father  happened  to 
see  his  little  son  nailing  together  some  sticks.  The 
boy  had  nothing  more  in  mind  than  to  drive  nails 
into  the  sticks  and  fasten  the  sticks  together,  but 
as  it  happened  there  were  four  sticks  fastened 


108  PATENTS    IN    MANUFACTURING 

together  by  four  nails  in  a  peculiar  way.  The  child 
having  driven  the  nails  picked  up  the  sticks,  and  as 
he  lifted  them,  they  swung  on  the  nails,  as  on  pivots. 
The  sticks  had  a  peculiar  motion,  and  this  motion 
suggested  to  the  father  a  mechanical  movement 
which  he  invented  and  applied  to  two  different 
purposes  and  patented.  Obviously,  the  invention 
never  existed  in  the  sticks.  The  child  would  have 
thrown  them  away  or  knocked  them  to  pieces,  and 
the  invention  would  never  have  come  into  exist- 
ence, if  it  had  not  been  for  the  operation  of  the 
mind  of  the  father  on  the  nebulous  idea  contained 
in  the  sticks  accidentally  fastened  together  in  a 
peculiar  way.  Thus  the  invention  was  the  result 
of  the  suggestion,  and  yet  it  was  a  real  invention 
supporting  a  valid  patent. 

The  reverse  of  the  mechanical-movement  inci- 
dent was  a  case  of  the  invention  of  a  metal  bar  for 
reinforcing  concrete,  which  bar  was  provided  with  a 
large  number  of  indentations,  or  corrugations  on  its 
surface  to  give  it  a  strong  hold  on  the  concrete,  and 
yet  the  corrugations  on  opposite  sides  were  so 
arranged  that  the  cross  section  of  the  bar  was 
substantially  uniform  throughout  its  length,  and 
thus  its  strength  was  not  impaired.  One  of  the 
claimants  for  the  patent,  J — ,  showed  that  he  had 
made  bars  which  had  corrugations  or  indentations 
on  opposite  sides,  and  these  corrugations  were  so 


CONTESTS    BETWEEN   RIVAL   CLAIMANTS         109 

shallow  that  the  cross  section  happened  to  be  fairly 
uniform  throughout  the  length  of  the  bar.  The 
corrugations,  however,  were  not  accurately  staggered 
with  reference  to  each  other  on  opposite  sides  of 
the  bar,  and  he  was  unable  to  show  that  at  the  time 
the  bar  was  made  he  had  any  realization  of  the 
advantage  of  accurately  staggering  the  corruga- 
tions so  as  to  make  a  bar  which,  while  roughened, 
would  be  substantially  uniform  in  cross  section.  It 
was  held  that  he  had  no  conception  of  the  invention 
at  the  time  he  made  the  bar.  J —  did  not  realize 
the  importance  of  making  the  corrugations  stag- 
gered and  the  next  bars  he  should  make  were  just 
as  likely  to  have  the  corrugations  in  line  with  each 
other  (in  which  relation  they  would  weaken  the  bar) 
as  staggered,  and  it  was  only  when  something  later 
showed  him  the  advantage  of  staggering  the  corru- 
gations that  he  appreciated  the  invention. 

A  further  example  of  the  difference  between  the 
perception  of  the  desirability  of  an  invention  and 
the  conception  of  a  structure  to  serve  that  purpose 
is  the  case  of  a  machine  for  finishing  stockings. 
In  this  machine  the  stockings  were  mounted  on 
stretching  boards  and  were  automatically  passed 
between  gas  or  singeing  jets.  The  improvement 
consisted  of  a  stripping  device  whereby  the  stock- 
ings were  automatically  stripped  off  the  stretching 
boards  after  the  singeing  had  been  completed. 


110  PATENTS   IN   MANUFACTURING 

One  of  the  claimants  sought  to  establish  his  claim 
of  priority  by  showing  that  he  had  a  conception  of 
the  invention  at  a  date  earlier  than  his  opponent. 
The  Court  held  that  the  testimony  only  showed  that 
at  this  earlier  date  he  had  a  perception  of  the  desira- 
bility of  some  means  for  stripping  the  stockings 
off  the  stretching  boards,  but  that  he  had  no  definite 
idea  of  how  such  means  should  be  constructed. 
In  other  words,  he  had  a  perception  of  the  desira- 
bility of  the  invention,  but  he  could  not  construct 
the  improvement  or  tell  a  machinist  how  to  con- 
struct it.  He  was  therefore  held  not  to  have  had  a 
conception  of  the  invention  at  the  date  in  question. 
As  it  would  obviously  be  inequitable  to  permit 
an  inventor  to  establish  the  date  of  his  conception 
of  an  invention  by  his  own  unsupported  testimony, 
it  is  required  by  the  Patent  Office  and  the  courts 
that  his  testimony  be  corroborated  in  some  manner. 
The  temptation  to  put  the  date  farther  back  than 
it  really  was  is  strong,  and  the  settled  principle  has 
been  adopted  that  no  earlier  date  will  be  awarded 
an  inventor  than  the  earliest  date  when  he  can  show 
some  corroborative  evidence.  This  evidence  would 
usually  be  the  evidence  of  some  person  to  whom  he 
described  the  invention  at  the  date  in  question,  or 
some  writing.  The  person  to  whom  the  invention  was 
said  to  have  been  disclosed  must  be  able  not  only  to 
fix  the  date  but  to  testify  that  a  complete  dis- 


CONTESTS   BETWEEN   RIVAL   CLAIMANTS         111 

closure  of  the  proposed  structure  of  the  invention 
was  made  to  him.  It  will  not  usually  be  sufficient 
for  him  to  allege  merely  that  the  invention  was  dis- 
closed to  him  at  a  certain  date,  unless  he  can  estab- 
lish the  correctness  of  the  date  by  reference  to 
some  event  which  was  of  sufficient  importance  or 
peculiarity  so  that  he  was  not  likely  to  have  been 
mistaken  as  to  the  date  of  the  event,  or  by  refer- 
ence to  some  memorandum  which  he  made  concern- 
ing the  invention  at  the  date  in  question.  The 
corroborating  witness  will  not  sufficiently  cor- 
roborate if  he  simply  testifies  that  the  inventor  gave 
him  at  that  time  a  complete  description  of  how  the 
invention  was  to  be  constructed,  but  he  will  have 
to  be  able  to  testify  as  to  the  details  of  that  con- 
struction— at  least  sufficient  details  so  that  his 
description  answers  to  the  requirements  of  a  con- 
ception of  the  invention.  He  will  at  least  have  to 
be  able  to  testify  as  to  the  main  features  of  the 
invention. 

D  invented  a  telephone  system,  and  testified  that 
at  a  certain  date  he  had  used  it.  He  was  endeavoring 
to  establish  that  date  as  the  date  of  his  conception  and 
also  of  its  reduction  to  practice.  He  called  a  witness 
to  corroborate  him  who  had  assisted  in  the  operation 
of  the  device  alleged  to  be  a  conception  of  the  inven- 
tion and  to  be  a  reduction  to  practice  of  it.  The 
witness  testified  clearly  as  to  the  main  features  of 


112  PATENTS    IN   MANUFACTURING 

the  invention  and  its  mode  of  operation,  and  it 
was  shown  that  the  system  could  not  operate  as 
described  unless  other  features  which  the  witness 
could  not  describe  were  present,  or  unless  equiva- 
lents of  those  features  were  present.  The  opposing 
parties  could  not  show  that  D  knew  of  any  equiva- 
lents of  the  unidentified  features  at  the  time  the 
system  was  used,  and  it  was  held  that  he  was 
sufficiently  corroborated  so  that  the  unidentified 
features  were  held  to  have  been  proven. 

F  had  no  corroboration  of  his  conception  of  the 
invention  except  statements  in  a  memorandum  note 
book  which  he  had  written.  He  was  able  to  pro- 
duce a  witness  who  testified  that  F  had  such  a  book 
at  a  given  date,  but,  as  the  witness  had  not  seen  the 
entry,  it  was  held  that  the  date  was  not  established. 

The  rule  that  the  uncorroborated  testimony  of  an 
inventor  cannot  be  held  to  be  proof  is  applied 
in  the  case  of  joint  inventors  to  the  extent  that 
one  joint  inventor  cannot  alone  corroborate  his 
co-joint-inventor  as  to  their  joint  invention. 

In  the  case  of  joint  inventors  the  single  concep- 
tion must  be  the  product  of  the  two  minds  in  order 
to  be  a  joint  invention.  In  other  words,  it  is  not 
sufficient  that  one  inventor  conceived  of  certain 
parts  of  the  invention  and  the  other  inventor  con- 
ceived of  other  and  unrelated  parts  of  the  invention, 
to  make  a  joint  invention,  but  the  conceptions  of 


CONTESTS   BETWEEN   RIVAL   CLAIMANTS         113 

the  two  minds  must  be  so  interwoven  as  to  make 
together  a  unitary  invention.  For  instance,  if  one 
man  invented  a  new  construction  of  the  runner  of  a 
centrifugal  pump  by  which  a  higher  efficiency  was 
obtained,  and  another  inventor  improved  the  bear- 
ing of  the  shaft  of  the  pump,  this  would  not  be  a 
case  of  joint  invention,  because  it  is  obvious  it 
would  be  immaterial  to  the  more  efficient  action  of 
the  runner  what  kind  of  a  bearing  was  used,  so  long 
as  the  friction  was  reduced  to  the  same  degree;  and 
it  would,  on  the  other  hand,  be  immaterial  to  the 
action  of  the  bearing  what  sort  of  an  object  was 
carried  by  the  shaft. 

An  application  for  letters  patent  filed  in  the 
Patent  Office  is  of  course  evidence  of  conception  of 
the  invention  at  the  date  of  filing.  Since  an  inven- 
tor's right  to  a  patent  may  turn  wholly  on  his  ability 
to  establish  the  date  when  he  first  conceived  of  the 
invention,  it  is  desirable  that  each  step  in  the  pro- 
gress of  the  conception  be  recorded  in  some  way. 
The  inventor  should  preferably  make  a  careful 
description  or  drawing,  or  both,  of  the  idea  as  it 
first  occurs  to  him,  and  should  fully  explain  it  to 
some  person  capable  of  thoroughly  understanding 
it,  and  should  sign  the  description  and  drawing  him- 
self and  write  the  date  upon  it  himself,  and  should 
ask  the  person  to  whom  he  has  explained  it  also  to 
sign  the  description  and  drawing.  It  would  also  be 


114  PATENTS   IN   MANUFACTURING 

desirable  that  the  witness  should  write  the  date  in  his 
own  handwriting,  so  that  there  could  never  be  any 
question  as  to  the  correctness  of  the  date  when  the 
signatures  were  placed  upon  it.  It  is  also  very 
desirable  that  there  should  be  no  changes  made  in 
the  description  or  drawing  after  it  is  signed.  As 
each  additional  step  is  worked  out,  if  the  invention 
is  worked  out  step  by  step,  the  new  step  should  be 
shown  in  a  new  description  and  drawing,  carefully 
witnessed  as  the  the  first  one. 

CAVEATS. 

When  the  inventor  has  a  theoretically  complete 
idea  as  to  how  an  invention  may  be  carried  out,  but 
it  is  evident  that  before  the  invention  will  be  of 
practical  value  he  must  spend  a  considerable 
amount  of  time  in  further  work  and  experiment, 
the  law  provides  that  he  may  file  in  the  Patent 
Office  a  description  of  the  invention  as  far  as  he 
has  gone,  in  the  form  of  a  caveat.  This  caveat  is 
notice  to  the  Patent  Office  that  the  inventor  is  work- 
ing on  the  invention,  and  it  entitles  him  to  notice 
if  any  other  inventor  files  an  application  for  patent 
for  the  same  invention  or  an  invention  involving 
the  same  principles.  When  the  application  is  filed 
in  the  Patent  Office,  the  Patent  Office  will  suspend 
action  on  the  application  and  notify  the  caveator 
and  give  him  a  limited  time  in  which  to  complete 


CONTESTS   BETWEEN   RIVAL   CLAIMANTS         115 

the  invention  and  contest  with  the  applicant  the 
right  to  the  patent.  Where  an  invention  is  com- 
plete, there  is  no  advantage  in  filing  a  caveat,  and 
there  is  in  fact  a  disadvantage,  because  a  caveat 
is  never  regarded  as  equivalent  to  a  reduction  to 
practice,  while  the  filing  of  an  allowable  applica- 
tion is  so  regarded  as  will  later  appear.  The  in- 
ventor, when  his  invention  is  complete,  should  file 
an  application  for  patent,  not  a  caveat. 

REDUCTION  OF  THE  INVENTION  TO  PRACTICE. 

Actual  experience  shows  that  many  ideas  may 
be  described  in  words,  or  even  most  carefully 
worked  out  in  drawings,  but  yet  do  not  operate 
successfully  when  actually  tried.  Therefore  the 
law  requires  that  an  inventor  shall  actually  reduce 
the  invention  to  practice  by  building  and  testing 
the  physical  thing  (with  certain  exceptions  men- 
tioned later)  before  the  invention  will  be  considered 
complete.  This  reduction  to  practice  is,  as  above 
stated,  the  final  step  in  the  inventive  act.  The 
inventive  act  consists  of  a  mental  part,  the  concep- 
tion, and  a  physical  part,  the  reduction  to  practice. 
The  safest  and  most  complete  reduction  to  practice 
is  the  actual  building  and  using  of  the  device. 
There  are  some  devices  so  simple  that  it  is  certain 
from  a  mere  inspection  of  them  that  they  will 
successfully  perform  their  intended  function,  and 


116  PATENTS   IN    MANUFACTURING 

in  these  cases  no  test  is  required,  but  only  the  actual 
construction  of  the  device.  For  instance,  in  a  con- 
test between  two  inventors  over  an  envelope,  one 
of  them  showed  that  he  had  made  the  envelope  at  a 
certain  date  but  had  never  actually  put  it  into 
commercial  use.  It  was  held  that  a  mere  inspec- 
tion of  the  envelope  was  sufficient  to  show  beyond 
question  that  it  would  perform  its  intended  func- 
tion, and  so  the  mere  construction  of  the  envelope 
was  a  complete  reduction  to  practice. 

It  is,  however,  dangerous  for  an  inventor  to 
stop  short  of  actual  use  of  the  device,  because  it  is 
frequently  a  matter  of  opinion  whether  or  not 
actual  use  was  necessary  to  demonstrate  the  practi- 
cability of  the  invention.  Some  very  simple  inven- 
tions have  been  held  not  to  have  been  reduced  to 
practice  where  the  invention  was  constructed 
but  not  actually  used.  For  instance,  in  the  case  of  a 
roller  bearing,  the  inventor  who  first  constructed 
his  bearing  was  held  not  to  be  entitled  to  the  patent 
as  against  a  later  inventor,  because  he  had  not 
actually  used  the  bearing.  Even  so  simple  a  device 
as  a  garment  hook  was  held  to  have  required  use  to 
complete  the  reduction  to  practice. 

It  is  commonly  supposed  that  to  make  a  drawing 
of  an  invention  and  have  it  witnessed,  is  sufficient 
to  entitle  the  inventor  to  a  patent,  even  though 
someone  else  subsequently  makes  the  invention 


CONTESTS   BETWEEN   RIVAL   CLAIMANTS         117 

and  applies  for  a  patent  first.  This,  however,  is 
an  error.  The  making  of  a  drawing,  no  matter 
how  complete,  is  not  a  reduction  to  practice,  and 
the  inventor  must  either  actually  reduce  the  inven- 
tion to  practice  by  making  and  testing  the  physical 
thing,  or  constructively  reduce  it  to  practice  as 
later  described  herein,  by  applying  for  apatentfor 
it.  The  law  rewards  the  diligent  and  not  the  sloth- 
ful, and  it  would  be  inequitable  to  permit  a  man  who 
had  merely  made  a  drawing  of  an  invention  to  de- 
prive another  of  a  patent,  when  the  second  inventor 
had  proven  the  practicability  of  the  invention 
by  actually  or  constructively  reducing  it  to  prac- 
tice and  had  given  the  world  a  knowledge  of  it. 
The  man  who  only  makes  a  drawing  of  it  may  die 
and  the  drawing  may  be  forgotten  or  lost,  and  the 
public  in  this  case  would  be  no  better  off  than 
if  the  invention  had  never  been  made.  The 
making  and  witnessing  of  a  drawing  is,  therefore, 
only  proof  of  a  complete  conception  of  the  invention 
and  not  of  a  reduction  to  practice. 

An  inventor  must  be  careful  not  to  let  his  con- 
duct after  an  actual  reduction  to  practice  be  such 
that  it  will  discredit  the  reduction  to  practice.  If 
he  treats  the  machine  which  he  built  and  used  in 
such  a  way  as  to  raise  the  inference  that  he  does 
not  regard  the  machine  as  a  success,  he  may  destroy 
his  right  to  a  patent.  For  instance,  a  stamp-can- 


118  PATENTS   IN   MANUFACTURING 

celling  machine  was  completed  and  operated  in 
cancelling  stamps  in  a  post-office  at  Boston  several 
hours  a  day  for  several  days.  This  would  ordi- 
narily be  a  satisfactory  reduction  to  practice,  and, 
if  the  inventor  had  immediately  filed  his  applica- 
tion for  patent,  he  would  have  prevailed  as  against 
a  later  inventor  of  the  same  machine.  The  in- 
ventor of  the  Boston  machine,  however,  took  the 
machine  back  to  the  shop  and  partly  dismantled  it 
and  then  laid  it  aside  and  never  again  operated 
it  or  tested  it  in  public.  A  second  inventor  made 
the  same  invention  and  applied  for  a  patent,  and 
afterwards  the  first  inventor  applied  for  a  patent. 
It  was  held  that  the  first  inventor's  conduct  raised 
the  presumption  that  the  use  of  the  machine  in  the 
Boston  post-office  was  a  mere  abandoned  experi- 
ment instead  of  a  successful  reduction  to  practice, 
and  that  the  second  inventor  was  the  one  entitled  to 
a  patent.  The  mere  fact  that  a  second  and  better 
machine  on  the  same  principle  was  made  after  the 
first  machine  would  not  discredit  the  first  machine, 
but  the  first  machine  would  be  held  to  show  dili- 
gence in  reducing  the  invention  to  practice.  The 
device  which  is  claimed  as  a  reduction  to  practice 
must  be  sufficiently  perfect  to  demonstrate  the 
practicability  of  the  invention.  It  must  operate 
successfully;  but  if  it  goes  that  far,  it  does  not  de- 
stroy its  value  as  a  reduction  to  practice  to  show  that 


CONTESTS    BETWEEN   RIVAL   CLAIMANTS         119 

the  machine  was  crudely  constructed.  The  mere 
accidental  production  of  an  invention  without  appre- 
ciation of  what  has  been  done  is  not  a  reduction  to 
practice  of  the  invention.  For  instance,  an  inven- 
tion consisted  in  a  draft  pipe  for  an  automobile, 
having  an  open  upper  end.  W  lost  the  cap  on  his 
draft  pipe  and  ran  his  machine  one  day  without  it. 
It  was  not  shown  that  he  realized  the  bearing  or 
importance  of  what  had  happened,  and  it  was  held 
that  he  had  neither  conceived  the  invention  nor 
reduced  it  to  practice.  A  mere  model,  further, 
although  complete  in  its  form,  and  illustrating  how 
a  real  machine  would  be  constructed,  but  which 
model  was  itself  incapable  of  successful  operation, 
is  not  a  successful  reduction  to  practice.  A  device, 
however,  which,  although  intended  as  a  model,  is 
capable  of  and  does  actually  successfully  perform 
the  intended  function,  is  a  reduction  to  practice 
even  though  the  inventor  intended  to  use  better 
and  different  materials  in  the  commercial  manu- 
facture of  the  machine,  and  this  although  the 
model  may  be  only  half  the  size  of  the  commercial 
machine. 

In  order  that  a  reduction  to  practice  may  inure 
to  the  benefit  of  the  inventor,  the  reduction  must  be 
made  by  the  inventor  or  for  him.  The  conception 
and  the  reduction  to  practice  must  both  be  by  the 
same  person  or  the  reduction  to  practice  must  be 


120  PATENTS   IN    MANUFACTURING 

by  an  agent  of  the  conceiver.  A  conception  by 
one  person  never  followed  by  a  reduction  to  prac- 
tice by  that  person,  or  by  any  agent  of  that  person, 
does  not  entitle  the  conceiver  to  a  patent  and  does 
not  interfere  with  the  obtaining  of  a  patent  by  some- 
one else  who  afterwards  conceived  the  invention  and 
also  reduced  it  to  practice.  Although  A  may  con- 
ceive an  invention,  and  B,  without  A's  knowledge 
may  reduce  the  invention  to  practice  for  B's  own 
purposes,  A  will  not  be  entitled  to  a  patent  because 
of  B's  reduction  to  practice.  A  can  claim  the  bene- 
fit of  B's  reduction  to  practice  only  when  B  is 
acting  as  A's  agent.  For  instance,  an  inventor  con- 
ceived an  improvement  and  made  a  model  of  it  and 
submitted  the  model  to  the  company  which  made 
the  machine  he  had  improved.  The  company 
refused  to  purchase  the  invention,  but  an  officer  of 
the  company  disclosed  it  to  a  foreman  of  a  subsidi- 
ary company,  and  he  built  a  complete  machine 
embodying  the  improvement.  The  inventor  after- 
wards had  a  contest  in  the  Patent  Office  with 
another  inventor  for  the  same  invention,  and  it  was 
held  that  the  inventor  was  not  entitled  to  the  bene- 
fit of  the  reduction  to  practice  by  the  foreman, 
because  the  foreman's  action  was  not  as  the  inven- 
tor's agent.  The  company  bought  the  inventor's 
rights,  but  it  was  held  that  this  did  not  give  the 
company  the  right  to  prevail  in  the  contest  between 


CONTESTS    BETWEEN    RIVAL   CLAIMANTS         121 

the  inventors,  because  this  purchase  did  not  cure 
the  defect  as  to  the  reduction  to  practice. 

As  I  have  indicated,  there  are  some  exceptions 
to  the  requirement  that  an  invention  be  actually 
and  physically  reduced  to  practice.  In  the  case 
of  the  Bell  telephone  patent  Bell's  application  for 
patent  was  in  a  contest  with  other  inventors,  and 
the  evidence  did  not  show  that  Bell  ever  actually 
made  a  telephone  transmit  speech  before  the  filing 
of  his  application  for  patent;  but  as  his  application 
for  patent  fully  described  how  such  a  telephone 
should  be  built,  and  as  the  experts  of  the  Patent 
Office  had  decided  that  a  telephone  built  as  de- 
scribed in  the  application  would  work,  and  as  tele- 
phones so  built  had  worked,  the  Supreme  Court  of 
the  United  States  held  that  the  filing  of  this  allow- 
able application  for  patent  raised  a  presumption 
that  he  had  actually  and  physically  reduced  the 
invention  to  practice,  and  that  therefore  the  filing 
of  the  application  was  a  "  constructive  reduction  to 
practice"  and  counted  for  him  the  same  as  if  he 
had  actually  constructed  and  operated  such  a 
telephone  at  the  date  of  the  filing  of  his  applica- 
tion. Thus,  when  an  inventor  has  filed  an  applica- 
tion for  patent  which  is  held  by  the  patent  office  to 
be  allowable,  he  has  done  what  is  legally  the  same 
thing  as  building  and  testing  his  invention.  This 
is  very  valuable,  as  it  frequently  and  usually 


122  PATENTS   IN   MANUFACTURING 

costs  much  less  to  file  an  application  for  patent  than 
to  build  and  test  the  invention.  It  sometimes 
happens,  however,  that  an  opponent  in  the  contest 
is  able  to  show  that  the  invention,  if  constructed 
as  described  in  the  application  for  patent,  would 
not  operate  successfully,  and  if  it  would  require 
more  than  the  skill  expected  of  the  ordinary  good 
mechanic  to  correct  the  defect,  the  application 
loses  its  value  as  a  reduction  to  practice.  It  is, 
therefore  important,  when  possible,  actually  to 
reduce  the  invention  to  practice. 

If  the  inventor  allows  his  application  to  lapse 
for  any  reason,  it  also  loses  its  value  as  a  construc- 
tive reduction  to  practice.  For  instance,  the  law 
requires  that  each  action  by  the  Patent  Office  on  an 
application  be  fully  responded  to  within  a  year. 
If  such  response  is  not  made,  the  application  becomes 
abandoned,  and  when  it  has  become  abandoned  it 
is  only  evidence  of  a  conception  of  the  invention  at 
the  date  of  filing  and  is  not  a  constructive  reduction 
to  practice.  When  an  application  for  patent  has 
been  allowed,  the  final  Government  fee  must  be 
paid  within  six  months  or  the  application  becomes 
forfeited,  and  a  forfeited  application,  like  an  aban- 
doned application,  is  evidence  of  conception  of  the 
invention  only  and  is  not  a  constructive  reduction 
to  practice. 


CONTESTS   BETWEEN   RIVAL   CLAIMANTS         123 

DILIGENCE. 

If  no  rival  claimant  enters  the  field,  an  inventor 
may  take  as  long  as  he  pleases  in  reducing  his  inven- 
tion to  practice,  provided  the  public  does  not  get  a 
knowledge  of  the  invention  in  some  other  way  and 
put  it  into  use.  If,  however,  a  rival  enters  the 
field,  the  first  conceiver  must  be  exercising  reason- 
able diligence,  or  the  second  conceiver  will  be  held 
to  have  the  superior  equities  and  be  entitled  to  the 
patent.  This  qualification  that  the  diligence  must 
be  "reasonable"  is  interpreted  in  each  case  in  the 
light  of  its  circumstances.  For  instance,  it  would 
be  an  insufficient  excuse  to  say  that  an  inventor 
did  not  have  money  to  reduce  the  invention  to  prac- 
tice, if  he  was  at  the  same  time  spending  money  in 
other  inventions;  or  to  say  that  he  did  not  have 
money  to  apply  for  a  patent,  if  at  the  same  time  he 
were  applying  for  patents  on  other  inventions.  It 
would  not  be  sufficient  to  say  that  he  was  delayed 
by  illness,  if  the  illness  only  covered  a  part  of  the 
time.  The  excuse  must  cover  the  whole  time  with 
which  he  is  chargeable.  Temporary  insanity  or 
great  poverty  or  serious  illness  would  be  a  sufficient 
excuse.  The  mere  making  of  drawings  is  not  a 
sufficient  excuse,  if  that  is  not  promptly  followed 
by  actual  construction.  Evidently,  the  safest  plan 
is  to  proceed  with  all  reasonable  speed  actually 


124  PATENTS   IN   MANUFACTURING 

to  reduce  the  invention  to  practice.  The  steps  con- 
nected with  the  reduction  to  practice  and  testing  of 
the  machine  or  other  invention  should  be  recorded 
in  the  way  indicated  in  connection  with  the  concep- 
tion of  the  invention. 

INTERFERENCES,   OR  CONTESTS   BETWEEN   RIVAL 
CLAIMANTS. 

We  will  now  consider  how  the  Patent  Office 
decides  some  typical  cases  of  contests  or  "  inter- 
ferences" between  rival  claimants. 

The  most  important  principle  is,  that  the  first  to 
conceive  the  invention  is  entitled  to  the  patent  if 
he  couples  his  conception  with  a  reduction  to  prac- 
tice by  reasonable  diligence.  Another  important 
principle  is  that  the  first  inventor  to  file  an  applica- 
tion for  patent  is  presumed  to  be  the  first  inventor 
in  fact,  and  the  burden  of  proving  that  he  is  not  the 
first  inventor  lies  on  the  inventor  who  comes  later 
into  the  Patent  Office.  This  second  principle 
shows  the  importance  of  getting  promptly  into  the 
Patent  Office. 

Before  the  Patent  Office  lets  either  party  know 
who  his  opponent  is,  it  requires  each  party  to  file, 
under  oath,  what  is  known  as  a  "  preliminary  state- 
ment." In  this  the  inventor  is  required  to  state: 
( 1 )  The  date  of  the  original  conception  of  the  inven- 
tion; (2),  the  date  upon  which  a  drawing  was  first 


CONTESTS   BETWEEN   RIVAL   CLAIMANTS         125 

made;  (3),  the  date  upon  which  the  invention  was 
first  disclosed  to  others;  (4),  the  date  of  the  reduc- 
tion to  practice  of  the  invention;  and  (5),  a  state- 
ment showing  the  extent  of  use  of  the  invention. 
The  inventor  will  not  ordinarily  be  given  the  benefit 
of  proof  of  any  earlier  dates  than  those  set  up  in 
his  preliminary  statement,  because  of  the  strong 
temptation  to  change  the  dates  after  he  has  seen 
his  opponent's  dates. 
Taking  now  a  few  typical  cases. 


Aj 1  Bi       ••- 'I 

FIG.  2. 

A  (first)  conceived  and  (second)  reduced  to  prac- 
tice; and  B  (third)  conceived  and  (fourth)  reduced 
to  practice.  Here  A's  invention  was  complete 
before  B's  entered  the  field,  and  the  interval  between 
A's  conception  and  his  reduction  to  practice  is  unim- 
portant, however  great,  and  he  is  entitled  to  the 
patent.  See  Figure  2. 


FIG.  3. 

A  and  B  conceived  simultaneously,  but  A  reduced 
to  practice  before  B.  Obviously  A  is  here  entitled 
to  the  patent.  See  Figure  3. 

A  (first)  conceived  and  (second)  reduced  to  prac- 
tice, and  then  concealed  the  invention  for  a  long 


126  PATENTS   IN   MANUFACTURING 

time,  waiting  for  commercial  developments  that 
would  justify  his  putting  the  invention  on  the  mar- 
ket. B  (third)  conceived  the  invention;  A  (fourth) 
filed  an  application  for  patent,  and  B  (fifth)  reduced 
the  invention  to  practice,  having  been  diligent  from 
his  conception  to  his  reduction.  A's  concealment 
of  the  inventon  puts  his  original  reduction  to  prac- 
tice in  the  category  of  an  abandoned  experiment, 


A  | 1  Concealment  , , 

B  , , 

FIG.  4. 

since  the  law  does  not  favor  such  concealment;  and 
thus  A's  filing  of  his  application  for  patent  is  held 
to  be  his  date  of  conception  and  also  his  date  of 
constructive  reduction  to  practice.  Although  B 
did  not  reduce  to  practice  until  after  A's  applica- 
tion, he  is  entitled  to  the  patent,  because  he  con- 
ceived the  invention  before  A  filed  his  application 
for  patent,  (and  therefore  before  A's  legal  date  of 
conception)  and  coupled  his  conception  with  his 
reduction  by  reasonable  diligence.  This  case  is 
illustrated  in  Figure  4. 


FIG.  5. 


A  and  B  simultaneously  reduced  the  invention  to 
practice.    Obviously  the  equities  as  to  the  reduc- 


CONTESTS    BETWEEN   RIVAL   CLAIMANTS         127 

tion  to  practice  are  equal  here,  and  he  who  first 
conceived  the  invention  would  be  entitled  to  the 
patent,  provided  he  was  reasonably  diligent  when 
the  second  one  entered  the  field.  This  case  is 
illustrated  in  Figure  5. 


FIG.  b. 

A  (first)  conceived  the  invention  ;B  (second)  con- 
ceived the  invention ;  A  (third)  reduced  the  inven- 
tion to  practice,  and  B  (fourth)  reduced  the  inven- 
tion to  practice.  Here  B's  conception  took  place 
before  A's  reduction  to  practice,  but  as  A  began  the 
inventive  act  before  B  and  carried  it  through  to 
completion  with  reasonable  diligence,  he  is  entitled 
to  the  patent.  This  case  is  illustrated  in  Figure  6. 


FIG.  7. 

A  (first)  conceived  the  invention;  B  (second)  con- 
ceived the  invention;  B  (third)  reduced  the  inven- 
tion to  practice,  and  A  (fourth)  reduced  the  inven- 
tion to  practice.  Assuming  that  both  inventors 
were  reasonably  diligent,  A  would  be  entitled  to  the 
patent,  because  he  who  first  begins  the  inventive 
act  is  always  entitled  to  the  patent,  if  he  carries  it 
through  diligently. 


128  PATENTS   IN   MANUFACTURING 


FlG.  8. 

A  (first)  conceived  the  invention  and  made  some 
efforts  toward  reduction  to  practice,  but  during  an 
interval  while  he  was  giving  his  attention  to  other 
matters  B  (second)  conceived  the  invention  and  B 
(third)  reduced  the  invention  to  practice  after  which 
A  (fourth)  reduced  the  invention  to  practice.  This 
case  is  illustrated  in  Figure  8.  As  A  was  sleeping 
on  his  rights  when  B  entered  the  field,  B  would  be 
entitled  to  the  patent,  as  the  law  rewards  the 
diligent. 

This  chapter  is  not  intended  in  any  sense  to  be  a 
complete  statement  of  the  law  of  interferences,  but 
is  only  intended  to  show  what  precautions  it  is 
necessary  to  observe  in  the  production  of  an  inven- 
tion and  in  making  records  of  the  various  steps,  and 
to  show  the  importance  of  promptness  and  thorough- 
ness, because  these  must  be  attended  to,  if  at  all, 
before  the  invention  is  brought  into  the  Patent 
Office. 

This  chapter  concludes  the  present  volume.  As 
I  stated  at  the  outset,  my  purpose  was  not  to  make 
the  manufacturer  his  own  lawyer.  But  I  aimed 
to  give  manufacturers  a  better  idea  of  the  nature 
of  a  patent;  of  the  protection  it  affords  or  may 


CONTESTS    BETWEEN    RIVAL    CLAIMANTS        129 

afford;  of  the~great  adaptability  of  patents  to  differ- 
ent commercial  conditions  and  forms  of  transac- 
tions ;  of  some  of  the  many  ways  in  which  the  courts 
will  thwart  attempts  to  get  the  benefit  of  an  inven- 
tion without  the  consent  of  the  patentee ;  and  of  the 
ways  in  which  the  manufacturer's  patent  relations 
with  his  employee  can  be  rendered  safe,  and  fully 
protected.  The  patent  system  of  the  United  States 
is  the  result  of  over  three  hundred  years  of  legisla- 
tion and  of  interpretation  by  the  courts,  beginning 
with  the  reign  of  James  the  First  in  England,  and 
it  must  be  evident  from  what  little  has  been  shown 
by  the  foregoing  chapters  that  a  system  has  been 
worked  out  that  is  thoroughly  practical  and  that 
provides  for  every  reasonable  contingency.  Whe- 
ther or  not  a  manufacturer  likes  the  idea  of  patents, 
they  are  in  existence  in  large  numbers,  and  they 
enter  into  almost  every  line  of  business;  he  must 
reckon  with  them  whether  he  will  or  not.  It  is 
therefore  necessary  that  he  have  some  understand- 
ing of  the  subject,  such  as  it  has  been  the  object  of 
this  short  review  to  afford. 


'    '  ,i 

/.* 

r 


INDEX. 


Abandoned  application  not 
equivalent  to  reduction 
to  practice,  122 

Abandonment  of  invention, 
117 

Application,  abandoned,  not 
equivalent  to  reduction  to 
practice,  122 

Article  of  manufacture,  na- 
ture of,  21 

Art,  nature  of,  20 

Automobile  manufacturers, 
combination  of,  47 

Bars  to  grant  of  a  patent,  26 

Blank  patenting,  75 

Broad  claim,  illustration  of, 
35 

Caveats,  114 

Claim  of  a  patent,  defined,  29; 
illustration  of  too  limited 
claim,  31;  omission  of  one 
element  voids,  32;  illus- 
tration of  claim  that  pro- 
tects, 32;  the  less  said  the 
more  it  covers,  33;  skill 
required  in  drawing,  35; 
interpretation  of,  53;  in- 
valid in  its  terms,  54. 

Claimants,  rival,  to  same  in- 
vention, 103 

Combination,  nature  of,  22; 
new,  of  old  elements,  22 

Combinations,  trade,  under 
patents,  45 

Competition,  controlled  by 
patents,  14 


Composition  of  matter,  na- 
ture of,  21 

Conception  of  invention,  104, 
107 

Constructive  reduction  to 
practice,  105 

Contests  between  rival  claim- 
ants to  an  invention,  103 

Contracts  with  employees, 
examples  of,  98 

Contributory  infringement, 
63 

Damages,  65 

Defences  to  suit  for  infringe- 
ment, 50 

Degree  of  proof  to  upset  pat- 
ent, 51 

Design  patents,  67 

Different  industries,  rights  to 
use  invention  under  same 
patent,  41 

Diligence,  123 

Doctrine  of  equivalents,  57 

Elements,  may  be  patentable 
alone,  22;  omission  of 
without  equivalent  avoids 
infringement,  59 

Employee,  relations  to  em- 
ployer, 84;  inventions  of, 
to  whom  belong^  85;  lia- 
bility as  to  infringement, 
101 

Employer,  relations  to  em- 
ployee, 84;  right  to  in- 
vention worked  out  by 
employee,  85;  liability  as 


131 


132 


INDEX 


to  employee's  infringe- 
ment, 101 

Equivalents  infringe,  55 

Exportation  of  patented  de- 
vices, 64 

Extension  of  patents,  38 

Form,  changes  of,  may  not 
avoid  infringement,  61 

Grant  of  a  patent,  rights  con- 
ferred by,  28;  language 
of,  39 

Importation  of  patented  de- 
vices, 64 

Infringement,  defined,  50; 
not  escaped  by  independ- 
ent conception  by  infrin- 
ger,  52;  of  single  claim, 
52;  protection  against 
suit  for,  by  showing  in- 
validity of  claim,  54;  not 
escaped  by  avoiding  terms 
of  claim  but  using  equiva- 
lent, 55;  avoiding  t>y  limit- 
ing claim  by  the  prior  art, 
58;  by  improvements,  59; 
avoided  by  omitting  an 
element,  59;  changes  of 
form  or  proportion  may 
not  avoid,  61;  process 
claim  infringed  although 
using  different  apparatus, 
62;  contributory,  63;  of 
prior  patents,  necessary 
to  consider  in  putting  out 
new  inventions,  76 

Injunctions,  use  of,  65;  pre- 
liminary, 66 

Interferences,  to  grant  of  pat- 
ent, 103;     principles     on 
which  decided,  124 
Interpretation  of  the  claim 

of  a  patent,  53 
Invention,  necessary  to  sus- 
tain patent,  cannot  be  de- 


fined, 22;  conception  of 
104;  records  of  making, 
113;  reduction  to  prac- 
tice, 115;  abandonment 
of,  117 
Inventive  act,  theory  of,  106; 

records  of,  113 
Inventors,  corps  of,  employed 
by   large   companies,  15; 
must  be  corroborated  in 
testimony,  110 
Lapsed  application  not  equiv- 
alent to  reduction  to  prac- 
tice, 120 

Leases  under  patents,  42 
License  under  patents,  42 
Machine,  nature  of,  21 
Making  an  invention,  records 

of  steps  in,  113 
Making,    using    and    selling, 
each  a  separate  monopoly, 
39;  rights    for,    may    be 
separately  granted,  40 
Manufacture,  nature  of,  21 
Marking,    patented    articles, 
66;  unpatented  articles,  66 
Materials,patentability  of  sub- 
stitution  of   one  old,  for 
another,  24 
Method,  nature  of,  20 
Monopoly,  patents  a  legalized 

form  of,  16 
Name  in  which  patent  is  to 

be  taken,  89 
Nature  of  a  patent,  26 
New  product,  patenting,  69; 
five   ways   of   protecting, 
69;  necessity  for  patent- 
ing, 77 

New  use  of  old  device  may  be 
patentable,  23 


INDEX 


133 


Object   of   invention,   differ- 
ence between  object  and 
conception,  109 
Omission     of     one     element 

voids  claim,  32 
Patenting  a  new  product,  69 
Patent  office,  proceedings,  36; 

appeals  from,  37 
Patents,  improvements  in, 
and  growth  of,  13;  pro- 
vided for  by  the  constitu- 
tion of  the  United  States, 
13;  what  can  be  patented, 
20;  nature  of,  20,  26; 
subjects  of,  arts,  ma- 
chines, manufactures  and 
compositions  of  matter, 
20;  bars  to  grants  of,  26; 
grants  of,  28;  claims  of, 
29;  protection  afforded 
by,  38;  extension  of,  38; 
rights  under,  restricted  as 
to  territory,  40;  rights 
under,  restricted  as  to 
time,  40;  rights  to  same 
invention  in  different  in- 
dustries, 40;  in  whose 
name  to  be  taken,  89 
Preliminary  injunctions,  66 
Price,  restrictions  as  to,  42 
Process,  nature  of,  20 
Product,  protecting  by  im- 
provement, 70;  protect- 
ing by  patenting  process, 
71;  protecting  by  patent- 
ing blank,  75;  protecting 
by  patenting  machine  for 
making,  75;  protecting 
by  license  under  another 
patent,  76;  necessity  of 
finding  out  whether  a  new 
product  infringes  any  ex- 
isting patents,  76 


Proof  to  upset  patent,  degree 
of,  51 

Proportion,  changes  of,  may 
not  avoid  infringement, 
61 

Protection,  afforded  by  a 
patent,  38 

Public  use  and  sale  before 
patenting,  82 

Reduction  to  practice,  de- 
fined, 104,  115;  filing  al- 
lowable application  for 
patent  in  patent  office 
equivalent  to,  105 

Repair  and  reconstruction  of 
patented  devices,  63 

Re-selling,  restrictions  as  to, 
42 

Rights,  granted  by  patent, 
39 

Rival  claimants  to  same  in- 
vention, 103 

Sale  of  new  invention  two 
years  before  patenting,  82 

Secret  inventions,  undesir- 
ability  of,  77 

Secret  use,  may  lose  right  to 
patent,  27;  may  not  in- 
validate subsequent  pat- 
ent to  another  inventor, 
27 

Sub-combinations  may  be 
patentable,  22 

Substitution  of  one  old  ma- 
terial for  another,  24 

Suit  for  infringement,  de- 
fenses to,  50 

Term  of  patent,  28 

Territory,  restricting  rights 
as  to,  40 

Testimony  of  inventor  must 
be  corroborated,  110 


134 


INDEX 


Theory  of  inventive  act,  106 

Time,  restricting  rights  as  to, 
40 

Trade  combinations  under 
patents,  45 

Unpatented  articles,  mark- 
ing, 66 


Use,  new,  of  old  device  may 
be  patentable,  23;  re- 
strictions as  to,  42 

Validity,  right  to  contest  may 
be  lost  by  agreement  as 
to,  51;  cannot  be  ques- 
tioned by  inventor,  51 


OVERDUE. 

• — 


-50W-8/32 


U.C.BERKELEY  LIBRARIES 


